The Office for Harmonisation in the Internal Market’s (”OHIM”) refusal to register WINE IN BLACK” as a Community Trade Mark (CTM), on the basis that it was confusingly similar to the earlier CTM NOVALBLACK”, was overturned by the European General Court in its judgment delivered on 21 May 2015.

The application was filed in February 2012 by German company Wine in Black GmbH, covering goods in Class 33. In October 2012, Portuguese company Quinta do Noval-Vinhos, SA opposed the registration based on the earlier Community word mark “NOVAL BLACK” which was registered in April 2010, covering identical goods in Class 33. In June 2013 the Opposition Division upheld the opposition, and in March 2014 the First Board of Appeal of OHIM dismissed the appeal.

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In its appeal to the General Court, the Applicant alleged infringement of Article 8(1)(b) of the Community Trade Mark Regulation, claiming that the Board failed to assess each mark as a whole, thus leading to the conclusion of a likelihood of confusion. The General Court endorsed the Board’s findings regarding the identity of the goods and the definition of the relevant public before proceeding to compare the marks at issue.

Contrary to the Board’s view, the General Court held that the marks were visually and phonetically similar only to a low degree and that there was no conceptual similarity whatsoever. Visually, the marks were regarded as dissimilar as they are composed of a different number of words and are distinguishable because of their initial parts.

Phonetically, despite the marks consisting of the same number of syllables, they are not pronounced with the same rhytm and intonation as 1) there is no coincidence between the vowels appearing in the first two syllables of the respective marks, 2) there is an equal number of syllables distributed over a different number of words, and 3) the word ’noval’ does not form part of the basic vocabulary of the English language and thus the relevant public would be unfamiliar with its pronunciation.

Conceptually, the General Court reproached the Board for failing to assess each mark as a whole, focusing on the conceptual similarities between the common word element ’black’. In this regard, the Court declared the words ’wine in’ in the Applicant’s mark and ’noval’ in the earlier mark ought to have been given due consideration despite the former being regarded as ”weakly distinctive” and the latter ”devoid of any semantic content”. The General Court held that the expression ’wine in black’ must be regarded “as being capable, as a whole, of surprising the public and conveying to it the idea of wine of elegance and distinction…rather than suggesting to it the simple concept of a wine that is dark in colour.” On the other hand, the word ’black’ in the expression ’noval black’ simply qualifies either “an element that is completely fanciful or the name of a company and thus does not give rise to an expression which, considered as a whole, may be associated with the same ideas as” conveyed by the mark applied for.

In light of the above, the General Court concluded that the identity of the goods was not sufficient to overcome the dissimilarities between the marks, ordering OHIM to pay the legal costs of both parties involved.

Significantly, this ruling reflects how conclusions of similarity between marks as expressed by OHIM at the initial examination stage and subsequent appeal stages may not necessarily comprise a conclusive and consummate assessment of the marks. Those who have filed CTM applications should always consider availing of the opportunity to appeal to the European General Court in order to secure valuable intellectual property rights.