Articolo pubblicato in World Trademark Review Daily (28 ottobre 2010)
In Villa Almè Azienda vitivinicola di Vizzotto Giuseppe v Office for Harmonisation in the Internal Market (OHIM) (Case T-546/08, September 21 2010), the General Court (First Chamber) has held that, under Articles 43(2) and (3) of the Community Trademark Regulation (40/94), genuine use of a mark may occur even if the mark is always used with additional elements. In the underlying proceedings, applicant Villa Almè Azienda vitivinicola di Vizzotto Giuseppe requested proof of genuine use of the mark YGAY by its owner, Bodegas Marqués de Murrieta SA. The Board of Appeal of OHIM found that the trademark owner had provided proof of genuine use of the mark for wine in Spain.
On appeal to the General Court, the applicant argued that the trademark owner had failed to prove genuine use of its mark, as the evidence provided showed that the mark was always used in association with other terms or signs.
The General Court agreed with the board's finding that:
“there is no regulation with respect to Community trademarks that requires that the opponent demonstrate use of the earlier mark separately and independently from any other designation to which the mark is associated.”
Therefore, as is usual practice in the wine sector, it is possible that two or more trademarks be used jointly. The court concluded that:
“in this case, the trademark is not used in a different form than that in which it was registered. Instead, several designations are used simultaneously without altering the distinctive character of the mark” (see Castellblanch v OHIM (Case T-29/04, Paragraphs 33 and 34)).
In Castellblanch, it was also held that wine companies commonly include several elements, such as the names of the winery and the product, on their labels (Paragraphs 20 and 34).
In the present case, the court rejected the applicant's argument that the relevant public consisted of Spanish consumers who have a higher level of attention and are more careful and circumspect than the average consumers. In contrast, the court expressly stated that wine is a product of mass consumption and, therefore, the board had correctly held that the average Spanish consumers had to be taken into account when assessing the likelihood of confusion. There was nothing to suggest that the relevant public consisted of Spanish consumers with a higher level of attention than consumers of other mass consumption goods.
Turning to the likelihood of confusion test, the court held that, when a complex mark is involved, the evaluation of the similarity between the marks is not limited to the comparison between one element of the complex mark and the other mark. In contrast, the court must take into account the overall impression of the marks. However, it is not excluded that, in certain circumstances, one or more elements of the complex mark might prevail in the overall impression.
In view of the foregoing, the General Court dismissed the action.