PORTO v PORTOBELLO ROAD surprise opposition decision
Trade mark decisions involving geographical indications (GIs) and protected designation of origins (PDOs) are relatively rare. In this case an application for a label design mark for PORTOBELLO ROAD No. 171 LONDON DRY GIN LONDON ENGLAND filed for gin was opposed, based on the PDO for PORTO, for wines from the well known region in Portugal.
To the surprise of many, including the writer, the opposition was upheld.
Whilst the Office for Harmonisation in the Internal Market (OHIM) were right to find that PORTO had been used and had extended to beyond mere local significance, it was somewhat vague when it came to comparing gin and wine merely holding that they are "comparable".
Protected designation of origins
In relation to the comparison of the mark and the PDO, the opposition division (OD) stated that the mark applied for contained the element PORTO and that, as this was common to both marks, they were conceptually similar. Nevertheless, they also noted that they differed with the elements:
- No. 171
The decision refers to the fact that some people might associate another meaning with the word PORTOBELLO, namely, flat cap mushrooms. Thus for these additional elements and the lion design the marks are conceptually dissimilar.
Only the briefest of mentions was made regarding the visual and phonetic comparison but without any clear statement other than that both contain the element PORTO.
The decision then turns to the global assessment and the fundamental question of whether the wine buying public seeking to purchase gin would be "misled"?
The OD generously suggested that these buyers will have an imperfect picture in their mind (possibly as a result of an alcohol-induced haze?) and then stated, without any reference or evidence, that marks for porto wine could be composed of two or three words.
The OD then extrapolated to reach a conclusion that there was a possibility that some of these relevant consumers will see the PORTOBELLO ROAD GIN mark as a sub-brand, for export reasons, for the PDO PORTO.
For good measure OHIM also held that BELLO was "rather weak for the goods at issue" and thus the consumer could be misled and the opposition succeeded.
We hope, and expect, the Board of Appeal, sipping on nothing stronger than some PDO-branded sparkling water, will keep their heads clear when considering the appeal that has been filed.
This decision acts as a timely reminder to brand owners and practitioners alike that, in some parts of OHIM at least, the strength and scope of protection afforded to PDOs can extend a good deal further than one might expect.
Case details at a glance
Jurisdiction: European Union
Decision level: OHIM Opposition Division
Parties: Instituto Dos Vinhos Do Douro e Do Porto v Gerard Feltham
Citation: Opposition No B 2 338 120
Date: 17 April 2015
Full decision: dycip.com/portabellogin