The General Court has found that the EUIPO had correctly upheld an opposition to an EU designation for an international trade mark registration for the word CIPRIANI in relation to beers and non-alcoholic drinks. The opposition was based on a likelihood of confusion with an earlier EU word trade mark, HOTEL CIPRIANI, registered in relation to hotels, restaurants and bars.
In September 2012, the applicant, Altunis-Trading filed an application for the word sign CIPRIANI in Class 32 covering ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit beverages and fruit juices; syrups and other preparations for making beverages’. In June 2013, the earlier trade mark owner , Hotel Cipriani SpA, filed a notice of opposition based on an earlier EU mark HOTEL CIPRIANI in Class 42 (now Class 43) corresponding to: ‘Hotels, hotel reservation, restaurants, cafeterias, public eating places, bars, catering; delivery of drinks and beverages for immediate consumption’. The opposition was upheld and the applicant filed a notice of appeal.
The appeal was rejected on the basis that there was an average degree of similarity between the goods and classes and a high degree of similarity between the marks, which would lead to a likelihood of confusion.
The applicant further appealed this decision on two grounds. Firstly, it sought to challenge the extent and nature of the bar and restaurant services based on two points: a) that the bar and restaurant services of the earlier trade mark owner were merely supplementary to the hotel services they were providing; and b) that the earlier trade mark owner used different signs for its bar and restaurant services and its hotel services. It argued that it is not sufficient for the mark to be merely associated with a service and the earlier trade mark owner had failed to provide proof of genuine use of the mark in respect of the bar and restaurant services (as opposed to the hotel services).
Secondly, the applicant contended that the Board of Appeal had wrongly assessed the similarity between the goods and services at issue. They argued that it is not sufficient that the goods and services are complementary to each other and that there is a requirement for consumers to believe that the same entity is responsible for the goods or services. It also stated that goods and services were, by their very nature, different.
The earlier trade mark owner was able to prove the independent nature of the bar and restaurant services. They contended that those services were offered to customers outside the hotel and produced a body of evidence showing the sign HOTEL CIPRIANI was used for bar and restaurant services including menus, brochures, reviews and invoices. The applicant also contended that the earlier trade mark owner had used signs different from the mark HOTEL CIPRIANI to designate its bar and restaurant services. However, it was found the other names that were used were constantly mentioned in connection with the earlier trade mark and that it was common for the earlier trade mark owner ‘s customers to mention that mark when referring to its bars and restaurants.
The applicant had not produced evidence that the use of different names with the earlier trade mark would affect the genuine nature of the use of that mark. It was found therefore, that there had been genuine use of the mark, including for bars and restaurants, and consequently the first plea of the applicant was rejected.
The second plea of the applicant, that there was an absence of any likelihood of confusion, was also rejected.
In assessing the comparison of the goods and services, all relevant factors had to be taken into account, in accordance with settled case law. This included their nature, intended purpose, method of use and whether they were in competition or complementary to one another. One must be indispensable or important for the use of the other in such a way that consumers believe the production of goods and provision of services are conducted by the same undertaking. The General Court had on numerous occasions found similarity between the goods in Class 32 and the services in Class 42 (now 43).
It was noted that bar and restaurant services necessarily use goods in Class 32 and also that it is common (reflected by a regular belief held by consumers) that bars and restaurants produce their own beverages. This was not affected by the fact these beverages were sold alongside other brands.
In comparing the two signs, it was found that the two signs were visually and phonetically similar and that, whilst the element of ‘hotel’ in the earlier mark differentiated it from the mark applied for, the distinctiveness was weak with regard to services provided for by or in a hotel. The applicant had not in fact disputed this finding of the Board of Appeal and therefore the finding was upheld by the General Court.
In light of the above, the General Court held that there was a high degree of visual and phonetic similarity between the marks and an average degree of similarity between the signs at issue which would lead to a likelihood of confusion on the part of the relevant public.
Case Ref: Case T-438/16