Thursday 21 May 2009


SA wines always winners!

Well maybe not always, but definitely at the ECJ!

A South African winery, Waterford Wines, applied to OHIM for a figurative mark 'Waterford Stellenbosch' in class 33 for alcoholic beverages, namely wines produced in Stellenbosch. The application was opposed by Waterford Wedgwood, manufacturers of the well-known Waterford crystal, who had a registration in class 21 for goods that included 'articles of glassware'. The opposition was based on art 8(1)(b) of Reg 40/94 (similar marks/similar goods).

OHIM's Opposition Division held that there was no likelihood of confusion as the goods were not similar. On appeal, OHIM's First Board of Appeal disagreed and held that the goods concerned were similar on account of the high degree to which wine and wine glasses complement each other. A further appeal to the Court of First Instance resulted in a finding that, although there was a degree of complementarity, there was no similarity and so there could be no likelihood of confusion between the marks.

Finally, on appeal to the ECJ, the court held that the more distinctive the earlier mark, the greater the likelihood of confusion, and that a low degree of similarity between the goods concerned can be offset by a high degree of similarity between the marks. However, a complete lack of similarity cannot be offset by the distinctiveness of the earlier mark. The ECJ confirmed the finding by the Court of First Instance that the goods were not similar, despite a degree of complementarity and dismissed the appeal.

We hope that when the mark proceeds to registration, these wines will remain available in South Africa, and that consumers in the EC will not be the only ones to raise a glass of Waterford to toast the occasion.

The full text of the ECJ judgment is available here



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