Trademarks, Brands, Patents, Designs, Made in Italy, Copyrights, Competition Law, Contracts and Enforcement

20 giugno 2008

David vs. Goliath: David wins again!

Stefano Sandri

San Polo Srl – a small Italian company – filed an application for the "MEZZOPANE" Community trade mark (see attached picture). The goods in respect of which registration was sought within Class 33 were ‘Wines’. The Coca-Cola Company lodged an opposition against registration of the above mark, on the basis of the following earlier marks: the Austrian word mark MEZZO, covering ‘beers, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages’ in Class 32 and the German word mark MEZZOMIX, covering ‘mixed lemonade-based drinks’ in Class 32.

Clearly the marks in question must therefore take account of the German-language context, where the terms MEZZO e PANE have no meaning.
The Opposition Division upheld the opposition, but the First Board of Appeal upheld the intervener’s application and annulled the decision of the Opposition Division. According to the Board of Appeal, there was no likelihood of confusion within the meaning of Article 8(1)(b
) CTMR between the marks in question.

The Coca-Cola Comp
any appealed to the CFI but the Tribunal (T-175/06, 18 giugno 2008) dismissed the appeal confirming the BOA’s decision. In the present case, after making a global assessment of the likelihood of confusion, the Court was of the opinion that, despite the visual and phonetic similarities between the signs at issue, there was no likelihood of confusion between those marks. This conclusion was reached by the Court mainly and definitively on the assessment of the difference between the products, wine, on the one hand, and the non-alcoholic products covered by the earlier marks, on the other.

It’s not the first time that such an issue came to the attention of the CFI (see case MYSTERY and VITAFRUIT). However, the application of case-law can result only in a preliminary analysis, notes the Court. Consequently, in the subject case, “it cannot exclude a supplementary analysis in order to ensure that the likelihood of confusion between the marks in question is fully assessed”.

In other words it is here confirmed what I named the principle of the "contestualization" of the trademark. Taking in account therefore all the pertinent and relevant circumstances, the role of the relevant consumer and the rules of perception are manifestly essential. The assertion, for instance, that “the word element in the mark applied for is accentuated by means of the finely-drawn frame enclosing it”, is a direct application of the cog
nitive rule ‘figure-ground’ belonging to the Gstaltung school.

On its turn, the Court pays care attention to the behaviour of the consumers, their level of attention and their habit, which, to certain extent, are more or less the same in the Community, although wine and bier may have different numbers (see Italy and Germany, for instance).

The legal defence of San Polo was indeed based on the issue of the distance between wine, from one side, and the other beverages covered by the Coca-Cola marks. San Polo’ arguments, in this respect, have been at large retained by the Court, some times literally: "…although the production of each of those beverages requires a fermentation process, their respective methods of production are not limited to fermentation and are fundamentally different. Thus, crushing grapes and pouring the must into barrels cannot be assimilated to the brewing processes of beer"(64).

Again, “the Court considers that wine, on the one hand, and the non-alcoholic products covered by the earlier marks, on the other, must be considered not to be similar. the relevant consumer will not expect wines to come from the same undertaking as the non-alcoholic beverages covered by the earlier marks, and that those drinks cannot be regarded as items in a general range of drinks likely to have a common commercial origin… the average German consumer is used to and aware of the distinction between alcoholic and non-alcoholic drinks, which is, moreover, necessary, since some consumers do not wish to – or cannot – consume alcohol”.
In conclusion, a small Italian company (represented by Avv. Giovanni Casucci and advised by Prof. Stefano Sandri) has defied – at least at this stage - a multinational. David against Goliath, an old story.

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