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23 April 2018Trademarks

EU General Court denies appeal in alcohol trademark case

The EU General Court has denied an appeal concerning an alcohol-related trademark, siding with the European Union Intellectual Property Office’s (EUIPO) decision that it was too similar to a previous mark for alcohol.

Greek individual Dimitrios Mitrakos filed an application at the EUIPO on January 2015 for the figurative mark ‘Yamas’, in blue capital letters. ‘Yamas’ is a common phrase in Greek, equivalent to the English term ‘Cheers’, for toasting somebody’s health.

The goods covered by the applied-for trademark fall under classes 32 and 33, covering beer and brewery products; preparations for making beverages; and alcoholic beverages (except beer).

Spanish individual Juan Ignacio Belasco Baquedano filed a notice of opposition in April 2015 based on the earlier mark ‘Llama’, which was registered in 2005. The earlier trademark also covers goods in class 33.

In its recent decision, the General Court did not specify whether the term ‘Llama’ refers to the Spanish word for ‘flame’ or the domesticated animal.

The Opposition Division upheld Baquedano’s opposition and ordered Mitrakos to pay all the costs.

Mitrakos responded with a notice of appeal before the EUIPO in March 2016. However the Second Board of Appeal ruled in October 2016 that the goods in question were identical.

The board based its decision on a “very high degree of phonetic similarity”.

The applicant took the matter to the EU General Court, requesting that the contested decision be annulled.

Mitrakos argued that particular attention must be paid to the ‘s’ on the end of ‘Yamas’, claiming that in Spain, the earlier mark may be pronounced ‘sama’, whereas it is pronounced differently in the rest of the EU.

However, the EU General Court said that he did not produce any evidence supporting this argument.

The court upheld the board’s finding that the component of the signs ‘lla’ and ‘ya’ are pronounced in a similar manner in Spanish, or even identically. It also agreed that the final part of the signs are highly similar and the only difference is the ‘s’ on the end of ‘Yamas’. Therefore, the court ruled that the signs are highly phonetically similar.

The court concluded that the beverages are likely to be ordered orally in bars and restaurants (noisy environments), emphasising the importance of the phonetic similarities between the two trademarks, increasing the likelihood of confusion.

Mitrakos’s action was dismissed by the General Court and he was ordered to pay the costs.

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