Date of decision: 01.02.18

Reg 207/2009

Application

  • alcoholic beverages (except beers); liquers; spirits; wine; Italian wines (33)

Sangre De Toro 

  • ​alcoholic beverages (except beers), sparkling wines, oenology, wines, vermouths (33)  

(EUTM and Spanish marks) 

Commentary

The GC upheld the BoA's decision that there was a likelihood of confusion between the marks under Art 8(1)(b). 

In opposition proceedings, CSM had failed to put Miguel Torres to proof of use of the earlier EUTM registration. Contrary to CSM's submission, the scope of protection of the earlier mark was therefore not limited to Spanish wines and afforded protection in respect of the full scope of 'alcoholic beverages, except beers'. The BoA was therefore correct to identify a similarity of goods on this basis. 

The marks were held to be similar to an average degree on account of the fact that the later mark reproduced the earlier mark in its entirety – the additional figurative elements and omissions of the letters 'gre' and 'de' did not alter this assessment. Similarly the absence of these syllables from the mark applied for did not outweigh the phonetic similarity created by the common elements. The conceptual comparison was effectively neutral.

The appeal on the basis of Art 8(5) was dismissed as inadmissible as the BoA had not ruled on whether the earlier mark had a reputation.