Vin Rouge et Le Noir? NOVAL draws a Blanc in Battle of the Blacks

QED for QNV. Case T 420/14 Wine in Black GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Quinta do Noval-Vinhos, SA is a 21 May decision of the General Court of the European Union in a fascinating exercise in comparison of marks for identical goods.

In June 2012 Wine in Black applied to register the words Wine in Black as a Community trade mark (CTM) for ‘alcoholic beverages, (except beers), in particular: wines, brandy’ in Class 33 of the Nice Classification. That October Quinta do Noval-Vinhos (QNV) of opposition based on its own earlier CTM, NOVAL BLACK, registered for the same goods. Citing Article 8(1)(b) of the Community Trade Mark Regulation QNV argued that, on account of the identity of the parties’ respective goods and the similarity of their marks, there was a likelihood of confusion of average European wine drinkers who either spoke or had some knowledge of English and who were reasonably attentive to what they chose to drink.

The Opposition Division upheld the opposition and the First Board of Appeal dismissed Wine in Black's appeal. Said the Board, when comparing the parties' respective signs

(i) the marks had a certain degree of visual similarity, and a phonetic and conceptual similarity, as they contained the same number of syllables, had a similar structure and coincided in respect of the word ‘black’, which certainly appeared at the end of those signs;
(ii) the word 'black' was characterised as being non-descriptive of the goods in question, unlike the word ‘wine’ in Wine in Black’s trade mark;
(iii) NOVAL BLACK had average inherent distinctive character; and
(iv) the goods concerned could be ordered in restaurants, bars or cafés, which strengthened the role of  phonetic similarity between the marks and reduced the importance of the visual differences.

Wine in Black then applied to the General Court, seeking to have the decision of the Board of Appeal annulled. Its wish was granted.  According to the General Court:

* The Board of Appeal was wrong to find that the word signs Wine in Black and NOVAL BLACK were "visually similar to a certain degree". Wine in Black comprised three words, whereas NOVAL BLACK had only two, so their structure was only similar to a low degree. Secondly, while their lengths were similar, they began differently --  and the first part of a trade mark normally has a greater visual impact than its final part. Since the word ‘noval’ had no meaning and could not therefore be said to describe the characteristics of the goods, when placed at the beginning of QNV's mark it would attract the public’s attention more than the word ‘black’, although the latter was by no means negligible. Accordingly the two signs were visually similar to a low degree only, thus less similar than the Board of Appeal had found.

* Regarding phonetic comparison, the Board was wrong to find that the two signs were pronounced with the same rhythm and intonation simply because they contained the same number of syllables. There was practically no correspondence between the letters comprising the first two syllables of Wine in Black and those in the first two syllables of NOVAL BLACK. The fact that an equal number of syllables are distributed over a different number of words was likely to generate differences of rhythm and intonation in the marks' pronunciation. Finally, since ‘noval’ did not belong to the English language, the relevant public would not know exactly how to pronounce it: this precluded a presumption that the word would be pronounced with the same rhythm and intonation as the ‘Wine in’ part of 'Wine in Black'. There was thus only a low degree of phonetic similarity between the signs, contrary to the view of the Board of Appeal.

* Conceptually, while the shared presence of the word ‘black’ constituted an element that could give rise to similarity, the Board of Appeal was none the less required to conduct its assessment by considering each of the two signs as a whole. The Board of Appeal however merely argued that its finding that the signs at issue were conceptually similar was not affected by the differences resulting from the words ‘wine’ and ‘in’ in Wine in Black and the word ‘noval’ in NOVAL BLACK, since its finding concerned weakly distinctive elements and an element devoid of any semantic content. In doing this, the Board of Appeal did not assess Wine in Black’s mark as a whole and failed to take into account the fact that, even if the word ‘wine’ by itself was weakly distinctive in respect of the goods covered, the words ‘Wine in black’ had an imaginative and evocative character.

* Since the colour black did not describe the organoleptic characteristics of wines, an expression meaning ‘Wine in black’ must be regarded as being capable, as a whole, of surprising the public and conveying to it the idea of a wine of elegance and distinction, like a person dressed in black, rather than suggesting to it the simple concept of a wine that is dark in colour. This was not the case with NOVAL BLACK, where the word ‘black’ was not accompanied by a preposition and a word with a clear meaning, but only by the meaningless word ‘noval’ which might at most be perceived as a company name. Accordingly the marks had no conceptual similarity, despite their common element ‘black’.

* Turning to the likelihood of confusion, the The Board of Appeal's assessment was based on its faulty comparison of all three components of the marks themselves -- the visual, the phonetic and the conceptual. Further, since both marks were word marks, the Board's references to case-law were irrelevant to the extent that they dealt with the increased likelihood of confusion when marks that included figurative elements which were likely to differentiate them were reproduced without those figurative elements on menus used in cafes, bars or restaurants.

* Given the low degree of visual and phonetic similarity of the signs and their conceptual differences, even the fact that the marks were for use on identical goods was insufficient to establish a likelihood of confusion on the part of a public that demonstrates a reasonable level of attention.

This Kat thinks that the General Court has got it right.  He adds that, while OHIM instances and the General Court will naturally fasten on to the evidence before them, there is a world of evidence to suggest that the word 'black' is a pretty heavily used one in wine circles.  Apart from the fact that 'black' can indicate the colour of grapes used in the wine-making process and is therefore somewhat descriptive, it seems to be shared by many other traders in the manufacture and retailing of wine, for example:

Artwork in search of a
winery, by BlueLucy

Clear Black Wine here
Black Stump Wine here
Black Dog Wine Company here
The Black Bottle here
Black Pig Viognier here
Black Swan Wine here
Black Bear Winery here
Black Lagoon Languedoc here
Black Rat Wine List here
Black Hills Winery here
Black Estate Vineyard here
Black Craft Barossa Shiraz here
Black Cat Vineyards here and here (possible purchasers of the rights to the image on the right)

Given the frequency of use, it would be sad to think that the word 'black' might be regarded as having anything other than an extremely weak distinctive character.

Le Rouge et Le Noir here