|Applicant's mark||Earlier mark|
Both marks in this case covered alcoholic drinks, more specifically (and not surprisingly) whisky.
The applicant for the EUTM “CLAN” sought to argue that it was sufficiently distinguishable from the opponent’s mark CLAN MACGREGOR because it conveyed the general concept of a “group” rather than a specific family group.
The Board of Appeal had reached the conclusion that there an average level of conceptual similarity between the marks and also an average level of visual and phonetic similarity. Taking everything into account, including the identity of the goods, it decided that there was a likelihood of confusion and upheld the Opposition Division’s rejection of the application.
On appeal, the General Court carried out its own analysis of the degree of similarity between the marks. Because of the additional element MACGREGOR in the opponent’s mark, it disagreed with the Board of Appeal and found that there was only a low level of visual and phonetic similarity between the two marks. However, it agreed that there was an average degree of conceptual similarity arising from the common word CLAN and its conceptual reference to a Scottish family group.
The General Court did not agree with the argument that the typical purchaser of whisky would pay a high level of attention, not accepting as generally applicable the claim that Scotch whisky “inspires a devoted following among its connoisseurs” and inspires “a near cult-like devotion”. Whilst that may the case for a sub-category of consumers, the average consumer of Scotch whisky would pay only an average degree of attention.
Taking this into account, and also making allowance for imperfect recollection, the Court came to consider whether or not there was a likelihood of confusion. The identity of the goods counter-balanced the low level of visual and phonetic similarity. Adding the average degree of conceptual similarity into the blend, it reached the overall conclusion that there was indeed a likelihood of confusion, thereby upholding the opposition.