The Federal Administrative Court recently had to decide whether the use of the mark MILLEZIMUS for wines, spirits and wine bars resulted in a likelihood of confusion with respect to the trademark MILLESIMA, owned by France-based mail-order wine merchant Millésima SA.

Millésima owns the international registration MILLESIMA for "wines of guaranteed label of origin (AOC wines), vins de pays (local or regional wines), liqueurs, all these goods with year of vintage" in International Class 33. Multigraphix Sàrl, a Switzerland-based provider of graphic services, registered the Swiss trademark MILLEZIMUS for, among other things, wines and spirits in Class 33 and wine bar services in Class 43. Millésima initiated opposition proceedings, arguing that a likelihood of confusion exists between the marks.

The court dismissed Millésima's action based on certain arguments.

First, the court dealt with the distinctive nature of the trademark MILLESIMA. 'Millesima' is an adjective in Latin meaning 'thousandth', and with the exception of the last letter it is identical to the French term 'millésime' meaning 'vintage'. It also has a special meaning for the choice and distinction of wine, as one vintage may differ substantially from another due to varying weather conditions. Hence, the distinctive character of the sign for wines is significantly weakened.

Further, the court stated that wines in Class 33 are similar to wine bar services in Class 43. Finally, regarding the likelihood of confusion, the court stated that the French-speaking part of the relevant public – which pronounces 'z' and 's' in the same way – would associate MILLEZIMUS with the word 'Millésime', and not with the opponent's trademark MILLESIMA. Further, the challenged trademark altered the term more strikingly than the opponent's trademark. Although having a weak distinctive character, MILLESIMA had a certain scope of protection. However, in this case, the distinctiveness of MILLESIMA was very weak. Anyone seeing the mark MILLEZIMUS would recognise primarily a fanciful deviation of the French term 'millésime' and therefore would not expect any economic ties between the owners of MILLEZIMUS and MILLESIMA. Thus, no likelihood of confusion existed between the marks.

The court's decision illustrates that trademarks which differ insignificantly from descriptive terms will enjoy only a low degree of protection.

Christoph Caprez & Roger Staub

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