The Grand Board of EUIPO has concluded that there is no risk of confusing similarity between the trademark ICEBERG for vodka and the trademark ICEBERG for mineral water and fruit juice.
This decision was preceded by an Opposition Division decision upholding the opposition on the grounds of likelihood of confusion.
When making conclusions on likelihood of confusion, there are, according to European practice and academic discourse, a few things to keep in mind.
- The situation to study in which the confusion arises is the actual shopping situation when the consumer is picking goods from the shelves, not a theoretically constructed environment
where EU directives defines our perception of the world. - The cumulative effect of similarity, i.e. the consumers overall impression of similarity regarding the marks and the similarity regarding the goods or services, meaning that when the similarity regarding the marks is low, the similarity regarding the goods or services has to be high to cause a confusion. On the other hand, as in this case, when the marks are identical, the similarity of goods does not have to be that high, rather low, to cause a confusion.
- The administrative procedures ability to support the applicant and thereby finding the truth in the case, not the procedure of the civil courts of law where the court only judges on what is claimed by the parties.
In case R 1720/2017-G and the decision of 21 January 2019, the Grand Board of Appeal, reasons otherwise in all these aspects.
The marks, ICEBERG and ICEBERG, are considered identical.
The Grand Board agrees with the Opposition Division that the goods are similar to a low degree when directed at the public at large. They also agree that the public at large could be considered to have a level of attention to be average. This would have been in line with the principles of studying the situation in which the actual confusion arises, see 1 above.
A turning point
However, when the Grand Board starts analyzing the target group for vodka consumers and finds them “reasonably well-informed and reasonably observant and circumspect”, the door is opened for what is sometimes called “the method of analytical reduction”.
Even though the marks have been considered identical and the similarity regarding the goods hence
could be low, see 2 above, the Grand Board presents us with a reasoning separating “vodka” from “mineral water” and “fruit juices” by referring to EU directives defining these liquids in detail – ending with the finding that “vodka” is drunk “neat”, i.e. without ice or soft drinks.
The fact that pre-mixed alcoholic drinks do exist and that some of the market leaders do include vodka is just swept away by stating that there is no evidence – and “this has not been argued by the opponent”; which in our opinion does not comply with the objectiveness of the administrative procedure, see 3 above.
This decision by the Grand Board has – unfortunately not – been challenged by bringing it before the General Court of The European Community.
However, in Scandinavia, where we used to sail our longships between the icebergs to conquer the world, we will also this summer keep up the old tradition of mixing vodka with mineral water or soft drinks and having a Swedish “grogg”.
by Lars Thyresson & Maria Foskolos
Lars Thyresson Senior Partner, CEO, Attorney at law. Lars is one of the founders of the company. He has worked with the Swedish Patent Office and major IP firms. Lars is authorized before the EUIPO as a trademark and design attorney and he have a vast experience in strategic discussions and international trademark prosecution and litigation. Lars is the chairman of the Swedish branch of FICPI, the International Federation of Intellectual Property Attorneys. Get in contact with Lars >>>
Maria Foskolos Partner, Attorney at law. Maria has worked with the Swedish Patent Office and a law firm specialized in marketing law. She is authorized before the EUIPO as a trademark and design attorney and she have a vast experience in international trademark prosecution. Maria is also a member of the board of the Norwegian Board of Appeals in Intellectual Property Rights. Get in contact with Maria >>>