Italy: Court reverses trademark decision previously in favour of Heineken’s Italian arm

Heineken’s Italian arm suffered defeat last week when the EU General Court reversed a European Union Intellectual Property Office (EUIPO) decision that had previously gone in its favour, the World Intellectual Property Review reported on December 10.

The General Court delivered its decision in the trademark dispute on Friday, December 7.

Heineken Italia applied to register an EU figurative mark depicting the word ‘Cervisia’ and a circular element containing the representation of a seahorse with the EUIPO in 2014.

The beer manufacturer sought to register the mark in classes 32 and 33 for beers, fruit drinks, and alcoholic beverages.

The following year, Spanish beer producer La Zaragozana filed an opposition on the basis of its earlier-registered Spanish word mark ‘Cervisia Ambar’ (3,018,141), which was registered in 2012 in class 32 for beer.

In 2016, the EUIPO’s Opposition Division upheld La Zaragozana’s opposition after finding that a likelihood of confusion exists between the existing mark and the applied-for mark.

However, the Fifth Board of Appeal annulled the decision in 2017, finding that the aural similarity between the marks is outweighed by the visual and conceptual differences.

For example, in the applied-for mark, the word ‘Cervisia’ is “barely legible”, the board said, and the figurative elements of Heineken’s applied-for mark are “meaningful”.

La Zaragozana appealed against the decision.

The beer producer claimed that the board made “several errors” when comparing the marks, including a failure to apply the principle that word elements have more importance than figurative elements when conducting an assessment.

On Friday, December 7 the court held that the relevant public will, without much difficulty, recognise the word element ‘Cervisia’ in both the applied-for mark and the earlier-registered mark.

The board erred in its assessment of the marks’ visual similarities, the court said, as the common word element of the marks results in an average degree of visual similarity which is not outweighed by the strong stylisation of the applied-for mark.

Consumers are likely to remember this common word element of the marks, the court added.

The court also agreed that the board erred by failing to apply the principle that word elements have a greater impact than figurative elements.

The board had done so because of the “barely legible” nature of the applied-for mark’s word element, without being entitled to come to this conclusion, according to the court.

Overall, the relevant public may think that the goods covered by the marks originate from the same undertaking, resulting in a likelihood of confusion, the court concluded.

The General Court upheld La Zaragozana’s appeal, annulled the board’s decision, and ordered each party to bear its own costs.

10 December, 2018