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IP Cases & Commentary – Details

13 March 2013

Feathers Fly in the General Court - Chianti Fails to Stop French Rugby’s Rooster Mascot

Wendy Oliver

Consorzio vino Chianti Classico (Chianti), the body responsible for promoting and protecting the Chianti Classico denomination, with their long established black rooster logo, has failed to stop Fédération Française de Rugby (FFR) from registering a Community trade mark (CTM) which predominantly consists of a rooster design.

The rooster marks

FFR’s CTM application is a figurative mark which consists of a shield device bearing a rooster and the letters ‘F.F.R’. It covers ‘alcoholic beverages, except beer’ in class 33: Chianti filed opposition to the application based on their well-known status in France and Germany, along with their earlier existing UK and Italian Collective marks covering class 33 for ‘wines of the area of Chianti’:

Findings of the Opposition Division

The Opposition Division upheld the action, finding that FFR’s mark was confusingly similar to Chianti’s earlier UK mark and so, in accordance with Article 8(1)(b), it should be cancelled.

Findings of the Board of Appeal

FFR took the case to the Board of Appeal who overturned the decision, finding that despite the enhanced distinctiveness of the earlier marks, and the identity of the goods, the marks were ‘sufficiently distant’.

Findings of the General Court

Following the decision, Chianti filed an appeal to the General Court claiming a misapplication of Article 8(1)(b) as well as Article 8(2)(a)(ii) and Article 8(2)(c). They argued that consideration was not given to their well-known status in France and Germany.

In support of their arguments Chianti stressed that the earlier marks had an enhanced distinctiveness. They argued that the recognition of the rooster design by the public was now so intrinsically linked with the Chianti wine that it led to a phonetic similarity. Chianti suggested that consumers would request their drinks by describing the marks by their common defining element, ie, the rooster.

The Court immediately dismissed these notions on the basis that the general public do not form an association where figurative elements in marks are depicted in very different colours. Also, consumers would not describe the figurative item of the brand but would instead request the drink by orally referencing the word element that served to identify the brand, eg, from a wine list or similar.

Therefore, the fact that the roosters in each case were different colours (FFR’s being a ‘striking’ orange and Chianti’s being solid black), and that that the brand name of each company was in no way similar (regardless of which language the consumer had knowledge of) the Court could not conceive consumers would be confused.

The Court also ran through a detailed dissection of the Board of Appeal’s assessment of the visual, phonetic and conceptual similarity between the marks and found their conclusions were essentially correct.

Therefore, despite the identity of the goods, the Court agreed there was only a low degree of similarity and no likelihood of confusion existed and the Board of Appeal’s decision in FFR’s favour relating to Article 8(1)(b) was upheld. However, in the judgment, the Court annulled the Board of Appeal’s decision as far as their rejection of the Article 8(5) grounds of opposition. The Court held that the Board of Appeal did not ‘examine all conditions applicable to that provision’.

At the Hearing OHIM said they had confined their examination in this way for ‘reasons of procedural economy’.

The Court pointed out that despite OHIM’s omission, the Board of Appeal was wrong not to open up their assessment to include reputation in France and Germany.

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Amendment to OHIM Manual – Major Change to Classification

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