In Companhia Muller de Bebidas v The Office of Harmonization for the Internal Market (OHIM) T-472/08 3 September 2010 (unreported), following a detailed analysis of the distinctive and dominant elements of the Applicant’s figurative mark “61 a nossa alegria” and a number of the Opponent’s earlier trade marks incorporating the words “cachaça 51”, the General Court overruled a decision of OHIM’s Board of Appeal in finding some visual, conceptual and phonetic similarities between the numbers “51” and “61”. Despite rather different figurative elements, taking into account the identity of the goods to which the marks related, the Court held that there was a real likelihood of confusion between the marks.
In December 2003, Missiato Industria e Comercio Ltda, a Brazilian company, applied to register the mark below as a Community trade mark (CTM) in Class 33 covering “alcoholic beverages (except beers)”
Companhia Muller de Bebidas, a Brazilian drinks company, opposed the application on the basis that there was a likelihood of confusion with a number of its earlier Portuguese, Danish, UK, Spanish and Austrian figurative marks incorporating the words “cachaça 51” for identical goods, including the following series of UK figurative marks in respect of “alcoholic beverages made of sugar cane”.
The Opposition Division rejected the opposition. The First Board of Appeal dismissed Companhia Muller’s appeal finding that the differences between the marks precluded any likelihood of confusion under Article 8(1)(b) of the CTM Regulation (40/94/EC, now 207/2009/EC). Companhia Muller appealed to the General Court arguing that the Board had misinterpreted Article 8(1)(b) and related case law and had not carried out the global assessment of the marks concerned in light of their distinctive and dominant elements.
The General Court observed that, to assess the distinctive character of any element of a trade mark, it had to determine each element’s capacity to identify the origin of the goods to which the mark related and whether the element was descriptive of such goods. The assessment had to be undertaken by examining each of the marks as a whole. However, the overall impression conveyed by the mark concerned could be dominated by one or more of its components.
Only if all other components of the mark were negligible could the assessment of similarity be carried out solely on the basis of a particular dominant element. However, if any particular element was considered not negligible, that did not automatically make it dominant. Similarly, if any particular element was considered not dominant, that did not automatically make it negligible.
Although the marks differed visually in their word elements and in their ornamental figurative elements, in the Court’s view the marks coincided visually in the representation of a number comprising two digits, the second of which was identical. Further, in the figurative marks, the “51” and “61” were both represented in large characters, positioned centrally, in white against a dark background. This was sufficient to conclude that the Board had erred in finding that there was no visual similarity.
The Court found, that even though the marks differed phonetically in their word elements, on an analysis of the different ways in which each language pronounced the numbers “51” and “61”, there was a certain similarity between the way the earlier marks and the application mark would be referred to orally. Accordingly, the Board had been wrong to find that there was no phonetic similarity between the marks.
The Court overturned the Board’s finding that there was no conceptual similarity between the marks, holding that the numbers “51” and “61” were the most distinctive elements of the marks on account of their arbitrary nature in relation to the goods concerned, as they were not numbers that would be used commonly in relation to alcoholic beverages. The other elements were distinctive conceptually only to a low degree since they were highly suggestive of the goods. Even if the word “cachaça” in the Spanish, Danish, Austrian and UK figurative marks, was “fanciful” to consumers in these territories and therefore more distinctive, the conceptual similarity was still there, just slightly less strong in the case of those marks.
In undertaking its global assessment, the Court said that only secondary importance could be placed on the phonetic similarity between the marks, as the goods in question were often consumed in bars or restaurants as an ingredient in a cocktail and were not, therefore, always referred to by their own name, but by the name of the cocktail.
The Court decided overall that the figurative elements in the earlier marks did not have a specific conceptual value and that, as with the word elements “cachaça”, “pirassununga” and “a nossa alegria” (for Portuguese consumers anyway), they had been designed to reinforce the impact of the numerical elements of the marks. These figurative elements were not, therefore, sufficient to rule out any likelihood of confusion. Even if the relevant public perceived certain dissimilarities between the marks, there was a real likelihood that they, or at the very least, the average Portuguese consumer, would establish a link between them in view of the similarities between the dominant numerical elements and the identity of the goods. Accordingly, the Court upheld Companhia Muller’s appeal.
This case is a good example of how the global assessment test, taking all surrounding circumstances into account, is applied. However, the lack of importance placed by the Court on the varying figurative elements of the marks, which clients are often advised is the way to ensure that one mark is differentiated from another, is interesting and shows that a detailed consideration of the distinctive and dominant elements of a trade mark is crucial when assessing similarity and the likelihood of confusion.