In Shaker di L. Laudato & C. Sas v OHIM  T-7/04 (unreported), the Court of First Instance (CFI) has upheld an Office for Harmonization in the Internal Market (OHIM) Board of Appeal decision it originally annulled, allowing an opposition to the registration of a figurative mark featuring the word “limoncello” based on an earlier Spanish registration for the word mark LIMONCHELO. The CFI applied firm guidance given by the European Court of Justice (ECJ) to the effect that the Court must make a comparison of the marks as a whole and not solely against the dominant element of the composite mark.
In October 1999, Italian company Shaker filed an application for the Community trade mark LIMONCELLO DELLA COSTIERA AMALFITANA (pictured below) covering “jellies, jams, compotes” and “Lemon liqueur from the Amalfi Coast”.
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In 2000, Limiñana y Botella SL filed an opposition to the application on the basis of its prior Spanish registration for the word mark LIMONCHELO, covering “wines, spirits and liqueurs”.
The Opposition was upheld on the basis that there was a likelihood of confusion under Article 8(1)(b) of the Community Trade Mark Regulation (40/94/EC) in view of the visual and phonetic similarities between the two marks and because the goods in question were identical. Shaker appealed. OHIM’s Second Board of Appeal dismissed the appeal holding that due to the similarity of the marks and the goods in question, there was a risk that Spanish consumers might confuse or associate their commercial origin.
Upon application to annul the decision, the CFI initially found that there was no likelihood of confusion between the marks. It held that a complex mark that was composed of several elements could only be considered similar to another mark if the similar element constituted the dominant element within the overall impression created by the complex mark. Analysing the two marks, the CFI found that the dominant element of the mark applied for was the round dish decorated with lemons, which was distinctive due to its contrasting colours and large size. Therefore the CFI did not consider it necessary to assess the phonetic and conceptual features of the two marks.
EUROPEAN COURT OF JUSTICE
OHIM challenged the judgment of the CFI. The main issue was how the likelihood of confusion between a word mark and a complex word and figurative mark should be assessed. The ECJ held that the likelihood of confusion had to be assessed globally and on the overall impression created by the signs at issue. Accordingly, the CFI had made an error of law in holding that it was not necessary to analyse the phonetic and conceptual features of the other elements of the mark applied for.
CFI’S SECOND DECISION
Reinstating the Board’s decision, the CFI acknowledged that the likelihood of confusion required taking into account the interdependence of the similarity of the signs and of the goods and services covered. Consequently, the CFI stated that the figurative component of the mark applied for occupied a place visually as important as the word “limoncello” in the mark.
On an overall comparison of the marks, the CFI held that there was a similarity between them as the words “limoncello” and “limonchelo” were visually and phonetically practically identical. Accordingly, the OHIM Board of Appeal had correctly found that a likelihood of confusion existed.
MISUSE OF POWERS BY OHIM?
Interestingly, Shaker also argued that given the manifest error of assessment vitiating the Board’s decision, OHIM misused its powers. Shaker argued that OHIM’s error arose from its taking into account solely the word “limoncello” for the trade mark applied for when assessing the likelihood of confusion, which was not consistent with carrying out a global assessment of the various factors. In addition, Shaker argued that there was a manifest error of assessment in the stance taken by OHIM throughout the application procedure that was totally contradictory.
The CFI pointed out that the concept of misuse of powers was narrow and referred only to cases where an administrative authority used its powers for a purpose other than for which they were conferred. The Court then held that the alleged errors that the Board of Appeal possibly made in reaching that decision were not sufficient to lead to the annulment of the contested decision.
Consequently, the CFI dismissed the entire action and ordered Shaker to pay all the costs of the proceedings before the CFI and Court of Justice. The extensive litigation between the parties confirms the importance of the global appreciation test expounded in Sabel v Puma  ECR I-6191: unless one element clearly dominates a trade mark and all other components of the mark are negligible, the whole mark must be taken into account when assessing the likelihood of confusion.