No comparison of generic terms
The identity or similarity of the opposing goods is important if an earlier trade mark is to be enforced against a later trade mark by way of opposition proceedings. The EGC clarifies that the examination of the similarity of goods in the context of likelihood of confusion must not be limited to the comparison of superordinate general categories of goods (generic terms), but that the goods actually named in the list of goods must be compared.
Similarity of goods
The applicant had filed an opposition with the European Union Intellectual Property Office (EUIPO) against the EU tradtrade mark application “JORO”, which was applied for, inter alia for the following alcoholic beverages in Class 33: ”Aperitifs based on a distilled alcoholic liqueur; aperitifs made from liqueur; ginseng liqueur; Japanese liqueur flavoured with ume extracts; red ginseng liqueur; barley meal liqueurs; tonic liqueur flavoured with Japanese plum extracts [Umeshu]; alcoholic cocktail mixes; alcoholic cocktails with milk; alcoholic cocktails with chilled gelatine; Alcoholic fruit cocktail beverages; Alcoholic fruit beverages; Alcoholic tea-based beverages; Mixed alcoholic beverages other than beer-mixed beverages; Mixed alcoholic beverages; Aperitifs; Japanese sweet wines containing extracts of ginseng and cinchona bark; Black raspberry wine [Bokbunjaju]; Alcoholic beverages containing fruit; Punch [beverages]; Alcoholic fruit extracts’. The applicant’s opponent’s trade mark “JOKO” is registered for: “Fruit juices and vegetable juices (beverages), fruit drinks and vegetable drinks, fruit cocktails and vegetable cocktails (beverages), drinks made from fruit extracts and drinks made from vegetable extracts, nectars and other non-alcoholic fruit and vegetable drinks; lemonades; soda water; syrups and other preparations for making beverages; non-alcoholic beverages” in Class 32 in France. The opposition was only partially upheld. The EUIPO justified the lack of likelihood of confusion on the grounds that alcoholic and non-alcoholic beverages are not similar.
Assessment of similarity
The EGC states that, according to the relevant case law, the comparison of the goods must be made according to the nature of the goods, their intended purpose, their use, their distribution channel and their character as competing and complementary goods. If only the generic terms of the specifically claimed goods are compared, the assessment of the individual aspects falls short.
To the point
The fact that some consumers do not consume alcohol is only one aspect of the similarity test for alcoholic and non-alcoholic beverages. This aspect does not per se lead to dissimilarity of these goods. The similarity of the goods does not only play a role in the enforcement of your trade marks. The various legal considerations must also be taken into account when searching for earlier rights.