Too Schlossed to tell CASTEL from CASTELL?

By the time this Kat got down to reading the decision of the Sixth Chamber of the General Court of the European Union in Case T‑320/10 Fürstlich Castell’sches Domänenamt Albrecht Fürst Zu Castell-Castell v Office for Harmonisation in the Internal Market (Trade Marks And Designs) (OHIM), Castel Frères Sas, dating back to 13 September last, it was no longer topical and he decided not to write it up. However, now that it is heading on appeal to the Court of Justice of the European Union (CJEU) as Case C-622/13 P, it has regained its pristine topicality -- so here it is.

In April 2002 Castel Frères applied to register as a Community trade mark (CTM) the word CASTEL for ‘alcoholic beverages (except beers)’ in Class 33; the word was duly registered as a CTM. In October 2007 Fürstlich applied for a declaration that this mark was invalid, basing its application on an earlier geographical indication (GI) consisting of the word ‘Castell’, this being a protected term for wines in Germany, France, Greece, Italy and Spain [Hmm, sniffs Merpel, it wasn't a very protected term if CASTEL managed to slip on to the CTM register without anyone apparently noticing ..].

In June 2009 the OHIM Cancellation Division rejected Fürstlich’s application for a declaration of invalidity. Fürstlich then appealed to the Second Board of Appeal which in turn, in May 2010, dismissed its appeal.  The Board of Appeal acknowledged that the term ‘Castell’ was a German indication of geographical provenance for wines, protected in Germany, France, Greece, Spain and Italy, which was perceived as such by the relevant public. However, the disputed CTM differed from the earlier GI inasmuch as the former was spelt with a single letter ‘l’ while the latter was spelt with two letters ‘l’. This difference in spelling was likely to create, first, some distance and, secondly, a conceptual difference between the earlier GI and the disputed mark [With respect, this reasoning is total nonsense. This particular Kat has two letters 'l' in his surname, a fact to which a surprisingly large proportion of correspondents, including a substantial number of lawyers, trade mark attorneys and publishers, are apparently oblivious].

The Board of Appeal added that the disputed mark, in the light of its being commonly used in the wine sector and meaning ‘castle’, was perceived by the relevant public as having that meaning, whereas the earlier GI was perceived by that public as a geographical name, namely that of the German wine-producing municipality of Castell. Accordingly CASTEL would not be perceived by the relevant public as designating a place in Germany that was renowned for wine production; it was not therefore descriptive of the geographical origin of the goods. Finally, since the disputed mark did not contain or consist of a GI, there was no need to examine it in the light of Article 7(1)(g) and (j) of the Community Trade Mark Regulation [which deal with misleading use of geographical terms and wrongful use of GIs for wines and spirits].

Fürstlich then applied to the General Court to have the decision of the Board of Appeal annulled. Castel Frères opposed the application and also argued that it was inadmissible as an abuse of rights. Why? Because Fürstlich had filed an application to register the word sign CASTEL as a trade mark at the German Patent and Trade Mark Office while the invalidity proceedings before OHIM were ongoing.

Fortunately, and showing a little common sense as well as legal understanding, the General Court annulled the decision of the Second Board of Appeal.

* The argument on which Castel Frères sought to base its plea of inadmissibility, that Fürstlich had filed an application to register the word sign CASTEL at the German Patent and Trade Mark Office while the invalidity proceedings before OHIM were ongoing, was not submitted before the Board of Appeal. What's more, in any action brought against a decision of one of OHIM’s Boards of Appeal, an argument alleging an abuse of rights cannot play any part as regards the admissibility of that action.

* As to the definition of the relevant public, since the goods covered by CASTEL were everyday consumer goods intended for the general public, the relevant public was thus comprised of the average consumers of those goods. The relevant public by reference to which the absolute ground for refusal must be assessed is the average consumer in the Member State in which the place designated by a GI is situated. Thus the German Patent and Trade Mark Office was best placed to assess the relevant facts and the perception of the relevant consumer in relation to the earlier GI.

* How would the relevant public view the mark?  A geographical name is liable to designate the geographical origin of the category of goods concerned if that name designates a place which is currently associated, in the minds of the relevant public, with the goods in question, or if it is reasonable to assume that that association may be established in the future. In this case, since the Board of Appeal found that the relevant public was able to perceive the term ‘Castell’ as a GI for wines, it also found (i) that that term was sufficiently known to the relevant public as the name of a place where wine is produced and (ii) that that geographical name was associated with the category of goods concerned -- ‘alcoholic beverages (except beers)’. This being so, the term ‘Castell’ designated a place that was sufficiently known to the relevant public for the production of wines and was thus associated, for that public, with the category of goods concerned.

Mungo checks the reference books
for guidance on pronouncing 'll' ...

* The Board of Appeal found that there was a difference between the earlier GI and the disputed mark, in that CASTEL had a single ‘l’ while "Castell" had two ‘l’s.  This was insufficient to outweigh the resemblance which existed between them: it was a minimal difference in spelling and did not constitute a perceptible difference from the point of view of the relevant public between CASTEL and the term used to designate the wine‑producing municipality of Castell. Such a difference did not therefore create on the part of the relevant public an impression sufficiently far removed from that produced by the geographical name referred to by the earlier GI [CASTEL and Castell do sort of sound the same, thinks Merpel, but this doesn't seem to have been an issue.  The Welsh pronounce a doubled 'l' differently, which is presumably a matter of significance here].

* This conclusion applied even though CASTEL and "Castell" had differences in meaning which gave rise, according to OHIM, to a perceptible difference between them.

* The fact that the term ‘castel’, in conjunction with other terms, appeared frequently in the wine sector played only a limited role in the relevant public’s perception of the disputed mark. Consequently, the relevant public in the present case would not perceive the disputed mark affixed to a bottle of wine as meaning only ‘castle’, but would understand it also as an evocation of the geographical name referred to by the earlier GI.

Dedicated CTM enthusiasts might at this point be thinking "haven't there been other cases in which a different view has been taken with regard to the meaning of 'castle', or whatever?"  That would be correct. In Case T‑149/06 Castellani v OHIM – Markant Handels und Service (CASTELLANI) [noted by the IPKat here], when the General Court held, in assessing the existence of a likelihood of confusion, the German consumer of wine was accustomed to seeing a large number of trade marks for wine the names of which began with ‘Schloss’, ‘castello’, ‘château’, ‘castel’ or ‘castle’. Nevertheless, the fact that the relevant public may attribute the meaning of ‘castle’ to the term ‘castel’ in the case of marks which begin with that term cannot prevent that public from also establishing an association between that term and the geographical name referred to by an earlier GI when it is used on its own, as was the case here.

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The UK Intellectual Property Office wants your opinion as to whether the British Government should take an interest in this appeal. If you'd like to comment on this case, please email policy@ipo.gov.uk by the surprisingly generous deadline of 7 February 2014.