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| It says TEQUILA MATADOR, says Merpel, but isn't it a picture of a Red Bull ...? |
The story started on 5 August 2004, when Tequila Cuervo, SA de CV filed a Community trade mark (CTM) application for the TEQUILA MATADOR HECHO EN MEXICO logo (No 003975117), depicted on the right. Registration was sought in Class 33 for ‘alcoholic beverages, premixed alcoholic cocktails, tequila originating in Mexico and tequila liqueurs originating in Mexico’. The CTM was accepted for registration and published on 8 August 2005.
On 8 November of the same year, Mustafa Yilmaz opposed the registration of the TEQUILA MATADOR HECHO EN MEXICO logo on the basis of his earlier international registrations of the word trade mark MATADOR in Class 32 for ‘Beers; mineral and aerated waters and other non‑alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’. Mr Yilmaz’s MATADOR trade marks were (i) a German registration (No 302050531) with effect from 21 August 2002; and (ii) an international registration (No 792051) with effect from 31 October 2002 designating the Benelux countries, the Czech Republic, Denmark, Estonia, Greece, Spain, France, Italy, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Slovenia, Slovakia, Finland, Sweden and the United Kingdom. Mr Yilmaz based his opposition on relative grounds under Article 8(1)(b) of the CTM Regulation: given its identity with, or similarity to, the earlier MATADOR trade mark and the identity or similarity of the goods or services covered by the trade marks, there existed a likelihood of confusion on the part of the public in the territory in which his MATADOR trade mark was protected (the likelihood of confusion includes the likelihood of association with the earlier MATADOR trade mark).
In September 2009 the Opposition Division upheld Mr Yilmaz’s opposition. Why? (i) the goods covered by the signs were similar because they were in competition with each other and (ii) the signs were similar overall. A month later, Tequila Cuervo appealed and then, just in time for Christmas, amended its specification of goods to the following: ‘Tequila originating in Mexico, alcoholic cocktails containing tequila originating from Mexico, tequila liqueurs originating in Mexico’ falling within Class 33 -- the magic words ‘alcoholic beverages’ were thus removed.
In October 2010, the Second Board of Appeal of OHIM upheld Tequila Cuervo’s appeal by annulling the Opposition Division’s decision and allowing registration of the TEQUILA MATADOR HECHO EN MEXICO logo for ‘all the goods and services applied for’. This was because
- the likelihood of confusion was to be examined first by comparing the TEQUILA MATADOR HECHO EN MEXICO logo with the earlier German MATADOR trade mark;
- the relevant public was composed of average consumers in Germany [this says a lot about the popularity of tequila in Germany, Merpel thinks];
- in accordance with the case-law of the General Court (MEZZOPANE and MONTEBELLO RHUM AGRICOLE), the alcoholic beverages covered by the TEQUILA MATADOR HECHO EN MEXICO logo were different to both the ‘beers’ and the ‘mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’ covered by the earlier German MATADOR trade mark, due to their nature, origin, ingredients, method of production, intended purpose, use, lack of substitutability and lack of complementarity, even if some of those goods were, to a certain extent, in competition with each other;
- the finding that there was no similarity between the goods at issue was also valid in all the Member States other than Germany in which the earlier international MATADOR trade marks were protected;
- there was no identity or similarity of the goods covered by the signs at issue, so that, even if those signs were found to be identical, there would be no likelihood of confusion.
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| Does tequila really not quench thirst? The IPKat vows to find out ... |