After having its original judgement struck down by the European Court of Justice (ECJ), the Court of First Instance (CFI) has decided that there is a likelihood of confusion between a word mark 'LIMONCHELO' and a figurative mark containing the phrase "limoncello della costiera amalfitana" (Shaker v OHIM). The ruling comes a painfully protracted 9 years and 5 hearings after the figurative mark was first applied for.
After the Board of Appeal had upheld an opposition to the figurative mark, the CFI initially ruled that there was insufficient similarity between the two marks, by erroneously only taking into account the visual element of the figurative mark and not any phonetic and conceptual features. The ECJ subsequently struck this decision down for failing to take in a global assessment of the likelihood of confusion.
After being chastised by the ECJ for misapplying the law, the CFI revisited the case. On this occasion the CFI highlighted that an overall impression of the marks must be examined. Importantly, however, it was held that this does not necessarily rule out focusing on one dominant part, as long as all the other elements of the mark are negligible.
The CFI then set about explaining that the word 'limoncello' was the dominant aspect of the mark, and that the other aspects were negligible. This was because the words 'della costiera amalfitana' and 'shaker', which were also present in the mark, were small and therefore negligible in the impression made. Furthermore, despite maintaining, as it did in its original judgement, that the presence of a picture of a plate decorated with lemons was important at a visual level, the CFI conceded that this would not attract the attention of the average consumers of a lemon-based liqueur. Rather, the word 'limoncello' would be the aspect that people would remember most about the mark.
After establishing this, the CFI made a comparison between the words 'limoncello' and 'limonchelo' and found that there were both phonetic and conceptual similarities between them.
While denying the Board of Appeal's finding that the marks were practically identical from a visual and phonetic point of view, the Court accepted that there was a similarity. This having been established, it then carried out a global assessment of whether there was a likelihood of confusion between the marks. In doing this, it took into account the interdependence of the similarity of the marks and the similarity of the goods and held that a likelihood of confusion did exist.
In the sluggish world of trade mark dispute resolution, the time required to come to this conclusion is by no means unique. It is worth speculating, however, whether a lot of time and blushes could have been spared, had the CFI come to a different decision in its original judgement.