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Incompatibility of Community Trademarks in the Wine Industry

Last September, the General Court settled in Luxemburg, gave judgements in favour of the interests of the companies Marqués de Murrieta and Vallegre-Vinhos do Porto. Both proceedings concerned issues of incompatibility between Community Trademarks and National Trademarks registered in a Member State of the European Union.

The first case (case T-369/09), was an invalidity action against the community trademark “PORTO ALEGRE” for affecting the prior rights of Vallegre-Vinhos do Porto and its registered trademarks “VISTA ALEGRE”, “QUINTA DA VISTA ALEGRE” and “VALLEGRE”.

Both, the Cancellation Division and the Board of Appeals of the OHIM, decided that there is likelihood of confusion between the trademarks. According to the OHIM, the fact that the dominant element in all the marks is “ALEGRE” would prevent the relevant consumer, in this case the Portuguese consumer, from identifying the undertaking of origin of each trademark, and confuse them.

The General Court agreed with the OHIM and rejected the appeal filed, therefore confirming the cancellation of the community trademark “PORTO ALEGRE”.

The second case (case T-546/08), was an opposition filed by Marqués de Murrieta against the community trademark application “I GAI” based on the earlier trademarks “YGAY” and “MARQUES DE MURRIETA YGAY”.

In spite of the applicant’s arguments, both the Opposition Division and the Board of Appeals of the OHIM rejected in its entirety the contested community trademark application. As has the European Court by confirming said decisions.

As the General Court rightly stated, the similarities between “IGAI” and “YGAY” are enough to establish the existence of likelihood of confusion between the trademarks. The applicant’s arguments regarding the different origin of the goods (wines from Italy and wines from Spain), and the particularly surprising argument about the end consumer of one of the signs (that “YGAY” is addressed to homosexuals), which by the way shows the applicant’s complete ignorance of the European Trademark Law, were correctly disregarded by the General Court.

In both cases, the General Court stated that taking into account the particularities of the wine market and industry, the consumers would be confused by the great similarities between the trademarks. Evidently, each industrial or commercial sector has its own particularities, and the Court must properly take them into consideration.

Carmen Sánchez-Puelles