Complementarity insufficient for similarity between goods
ECJ 7 May 2009 (Case C-398/07, Waterford/Waterford
Stellenbosch)
An application for a figurative trade mark 'WATERFORD
Stellenbosch' was filed by Assembled Investments in 1999. A
Community trade mark registration was sought for alcohol beverages,
namely wines produced in the Stellenbosch district, South
Africa.
Waterford Wedgwood filed opposition against this application
based on its Community trade mark WATERFORD which is registered for
articles of glassware.
Waterford Wedgwood relied on Article 8(1)(b) of Regulation (EC) No
40/94 on the Community trade mark (currently (EC) No 207/2009). It
states that the proprietor of an earlier trade mark can
successfully oppose an application if, because of its similarity to
the earlier trade mark and the similarity of the goods or services
covered by the trade marks, there exists a likelihood of
confusion.
OHIM's Opposition Division and the Board of
Appeal
OHIM's Opposition Division rejected the opposition on the
ground that there was no likelihood of confusion in so far as the
goods concerned were not similar. It found the fact that wine is
generally drunk in a glass insufficient.
Waterford Wedgwood appealed this decision. OHIM's Board of
Appeal found that the trade mark applied for and the earlier mark
were highly similar on the visual, phonetic and conceptual levels.
Subsequently, it ruled that the goods covered by the trade mark
applied for and the 'articles of glassware' covered by the
WATERFORD trade mark were similar on account of the high degree to
which wine and wine glasses complement each other. Furthermore, the
Board of Appeal established that the WATERFORD trade mark had a
strong distinctive character in the United Kingdom and in Ireland.
Consequently, it concluded that there was a likelihood of
confusion. It annulled the Opposition Division's decision and
refused the application.
Court of First Instance
This time Assembled Investments challenged the decision bringing an
action before the Court of First Instance. The Court carried out a
detailed assessment of the similarity of wine and glassware on the
basis of the factors mentioned in Canon/Cannon. It first found that
these goods are distinct by their nature and their use, that they
are neither in competition with one another nor substitutable and
that they are not produced in the same areas. Then, as regards
shared distribution channels, it held that such sales represent no
more than a negligible proportion of the overall sales of the
articles of glassware concerned. In the case of a wine glass and a
bottle of wine being distributed together, the Court found that
this is normally perceived by the consumers concerned as a
promotional attempt to increase sales of wine rather than as an
indication that the producer concerned devotes part of his activity
to the distribution of articles of glassware. Lastly, the Court
noted that even though there is a degree of complementarity between
some articles of glassware and wine, that complementarity is not
sufficiently pronounced for it to be accepted that, from the
consumer's point of view, the goods in question are similar.
Consequently, the Court of First Instance ruled that there can be
no likelihood of confusion between the conflicting marks.
ECJ Judgment
Waterford Wedgwood appealed this decision before the European Court
of Justice. It asserted that the concept of similarity must be
interpreted in relation to likelihood of confusion.
First, the Court reminds us that a "global assessment of
the likelihood of confusion implies some interdependence between
the factors taken into account and, in particular, between the
similarity of the trade marks and that of the goods or services
concerned. Accordingly, a low degree of similarity between the
goods or services covered may be offset by a high degree of
similarity between the marks, and vice versa (Canon/Cannon and
Lloyd/Loint). Moreover, the more distinctive the earlier mark, the
greater will be the likelihood of confusion (Puma/Sabel)".
Then the Court comes to the crucial consideration as to the
required degree of similarity. It states that the interdependence
between the similarity of the trade marks and that of the goods or
services concerned does not mean that the complete lack of
similarity can be fully offset by the strong distinctive character
of the earlier trade mark. Therefore, the Court continues, it
cannot be alleged that the Court of First Instance did not take
into account the distinctiveness of the WATERFORD trade mark when
carrying out that assessment. The trade mark's strong
reputation can only offset a low degree of similarity of goods for
the purpose of assessing the likelihood of confusion, and cannot
make up for the total absence of similarity. Complementarity alone
is insufficient. Consequently, the Court rejects Waterford
Wedgwood's appeal.
After nine years the opposition proceedings have come to an end.
Now Waterford Wedgwood is left to decide whether it wants to start
cancellation proceedings relying on Article 52 in conjunction with
Article 8(5) of (EC) Regulation No 207/2009, which expressly refers
to the situation in which the goods or services are not
similar.