EU court confirms invalidation of wine TM
The EU General Court today rejected the appeal of an Italian wine company, confirming that the European Union Intellectual Property Office’s (EUIPO) decision to invalidate its trademark was correct.
In 2010, Enoitalia Spa filed to register ‘Antonio Rubini’ as a word mark with the EUIPO in class 33 for alcoholic beverages. The mark was registered in January 2013.
Spanish wine company La Rural Viñedos y Bodegas sought to invalidate the mark in October 2013. La Rural is the owner of a figurative trademark which features the word ‘Rutini’, registered in 1999 for alcoholic beverages in class 33.
The Cancellation Division of the EUIPO upheld the opposition in 2015 and declared the ‘Antonio Rubini’ mark as invalid due to a likelihood of confusion between it and the earlier registered mark.
The goods covered by the marks are identical, the Cancellation Division said, and the marks are phonetically, visually, and conceptually similar.
Enoitalia appealed against the decision, but in 2015 the Fifth Board of Appeal dismissed the appeal.
The board said the dominant element of Enoitalia’s mark is ‘Rubini’, which is “almost identical” to the single word element of the earlier registered mark, so there is a “significant risk” that consumers may believe products with Enoitalia’s mark have the same commercial origin as those with La Rural’s figurative mark.
Enoitalia asked the General Court to annul the decision. It argued that the average consumer’s level of attention is “relatively high”, particularly as wines are generally selected on the basis of the bottle’s label where the relevant mark is featured.
The Italian wine company also claimed that the marks are “not sufficiently similar to establish the existence of a likelihood of confusion”, adding that the board incorrectly determined the dominant elements of the marks.
But because the goods covered by both marks are “everyday consumer goods for which the relevant public is the average consumer”, the board did not wrongly determine the level of attention of the relevant public, the court said.
It added that when considering the relevant public’s level of attention, the relevant factor is the nature of the goods and services in question rather than how the public purchase the goods.
The court upheld the board’s assessment of the marks’ dominant elements, saying ‘Antonio’ is a common forename but ‘Rubini’ is “not common in the entirety of the relevant territory”, so the latter word has a higher level of distinctiveness than the former, the court said.
Figurative elements of La Rural’s mark are “of secondary importance” to the word ‘Rutini’, the court said, particularly as the figurative elements depict grape leaves and will be understood to refer to the way wine is produced.
Finally, the court found that the marks are not conceptually similar, as determined by the board, but it upheld the findings of visual and phonetic similarity and an overall likelihood of confusion between the marks.
The court dismissed the appeal and ordered Enoitalia to pay the costs.
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