In Masottina SpA v OHIM [2013] T-393/11, the EU General Court upheld an opposition decision of the Office of Harmonization for the Internal Market (OHIM) Board of Appeal. The General Court found a likelihood of confusion between the marks CA’MARINA and MARINA ALTA in relation to alcoholic beverages due to the strong impact of the common word "marina".

BACKGROUND

Masottina’s Community trade mark (CTM) application for the word mark CA’MARINA covering "alcoholic beverages, in particular wine, sparkling wine, spirits, liqueurs" was opposed under Article 8(1)(b) of CTM Regulation 207/2009/EC on the basis of a prior Community word mark registration for MARINA ALTA for "alcoholic beverages (except beers)". The opposition was upheld on the grounds that the goods concerned were identical and the similarities between the respective marks outweighed their dissimilarities. The OHIM Board of Appeal dismissed Masottina’s appeal. Masottina appealed to the General Court.

DECISION

The General Court found both marks covered alcoholic beverages and therefore identical goods. It disagreed with Masottina’s assessment that the goods concerned were different on the basis that the mark applied for related to high quality goods sold at a high price through a specialised distribution channel. The General Court noted that this was irrelevant, as registration was sought for wines, sparkling wines, spirits and liqueurs, irrespective of their quality. The assessment of a likelihood of confusion between two marks could not be dependent on marketing practices, which could vary over time, but only on the list of goods appearing in the trade mark application.

The General Court agreed with the Board of Appeal that the marks were visually similar as both included the term "marina", the longest term composing the respective marks. The additional elements of the respective marks, "ca" and "alta", did not significantly reduce their similarity. Whilst the respective marks had a different number of syllables, those differences were insufficient to overturn the Board of Appeal’s finding of a phonetic similarity between the respective marks, owing to the presence of the word "marina" in each of them.

Notwithstanding the worldwide fame of Venice, the General Court did not agree with Masottina’s argument that the term "ca" in the mark applied for, which in the Venetian language meant a house situated on the coast of Venice, would immediately be understood by the average consumer in the European Union. Only consumers who understood the Venetian dialect would recognise the mark applied for to mean "marine house", whereas other consumers would perceive it as relating to a "marina", a term associated with the sea.

The General Court agreed with the Board of Appeal’s assessment that the element "alta" (meaning "high"), was a mere qualifier of the noun "marina" and did not substantially affect its strong impact, in particular as it was the second element in the earlier mark. Given that those unfamiliar with Italian or Spanish were unlikely to understand the different meanings of the two marks, but would know that both related to the sea, the marks were conceptually similar. Accordingly, the General Court found a likelihood of confusion between the marks, holding that consumers would believe that CA’MARINA was a new line of wines created by the owner of the earlier MARINA ALTA mark.

COMMENT

The Board of Appeal’s assessment was not called into question by Masottina’s argument that the term "marina" lacked distinctive character because it was commonly used and appeared in a large number of CTMs, including marks registered for goods in Class 33. The General Court considered that the fact that the earlier mark had been registered meant it had a minimum degree of distinctiveness.

The General Court noted that if Masottina believed that the earlier mark had been registered erroneously, it should have brought an invalidity action. In any event, Masottina’s evidence that the term "marina" was devoid of distinctive character was inadmissible as it had only been submitted for the first time before the General Court.