Bacardi won today before the European Court of Justice in the trademark dispute concerning the vodka trademark 42 BELOW against the Czech trademark application BLEND 42 VODKA. Because of the oral orders in bars, even the small phonetic similarity ’42’ was sufficient for likelihood of confusion.
The parties to the dispute are Bacardi & Co. Ltd. (Switzerland) and Palírna U Zeleného stromu a.s. (Czech Republic). Bacardi claimed trademark infringement of its own earlier trademark 42 BELOW (protected as an EU word mark and as an international trademark since 2009) by likelihood of confusion. This is because in 2014, the plaintiff from the Czech Republic had applied for and registered the EU figurative mark BLEND 42 VODKA.
Bacardi’s opposition was successful, but the Czech trademark applicants appealed against it, initially before the Board of Appeal, which, however, confirmed the likelihood of confusion for the Nice Class 33 goods. The Czech applicant appealed against this decision to the CFI.
Visual, phonetic and conceptual comparison
The Board of Appeal had found an average degree of visual similarity and at least a low degree of phonetic and conceptual similarity. In addition, the Board of Appeal had held that Bacardi had acquired an increased degree of distinctiveness through the use of its earlier EU mark 42 BELOW.
The applicant from the Czech Republic therefore objected before the CFI mainly to the differences found between the word elements and contested an increased distinctiveness of the Bacadi mark through use.
CFI: phonetic similarity has special significance
However, the European Court of Justice (Court of First Instance (CFI)) today dismissed the action from the Czech Republic in its entirety.
The Board of Appeal was entirely correct in finding that, with regard to the goods in Nice Class 33, particular importance must be attached to the phonetic similarity of the conflicting marks, the court explained. This is because, in the case of an oral order in bars, restaurants or discotheques, which are common for vodka, the fundamental phonetic similarity alone is sufficient to give rise to a likelihood of confusion.
Therefore, it is also not necessary to prove or present an increased distinctiveness through use of the earlier EU trademark, the CFI added, it is sufficient to point out that the Board of Appeal rightly granted at least an average original distinctiveness to the earlier Bacadi trademark 42 BELOW.
Bacadi mark 42 Below: original distinctive character
The Court explained this point in more detail: if consumers perceive the number 42 rather as an indication of the alcohol content of the vodka beverages, it is true that the Bacardi mark 42 BELOW can be said to have only a low degree of original distinctiveness; nor can it be ruled out that some of the relevant consumers do so.
But for the rest of the relevant public, who will not perceive this number “42” as an indication of alcohol content, the earlier EU mark has average inherent distinctiveness, the court found. That’s because the presence of a number in a mark is not, in principle, likely to be perceived directly by the relevant public as descriptive of a particular characteristic of the goods in question, namely alcohol content – if it is not associated with any of the units commonly used to measure that content, the CFI ruled.
Thus, since the earlier Bacadi mark has inherently at least average distinctiveness and the goods in question are identical and the signs in question are similar, it must be presumed for this part of the relevant public that there is a likelihood of confusion between the marks in question, at least in the UK, the CFI summarized its decision.
A likelihood of confusion therefore exists in this case, the CFI ruled, despite a low degree of phonetic similarity. This is because the high degree of similarity, even identity, of the claimed goods compensates for a low degree of similarity in the comparison of the signs.
In doing so, the court referred to the global and general case law regarding likelihood of confusion, according to which there is a correlation between the factors under consideration, in particular between the similarity of the marks and that of the goods or services designated by them. A low degree of similarity of the goods or services may be offset by a high degree of similarity of the marks and vice versa.
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