Limoncello Determination No Dandy Shakes

The Court of First Instance posted its ruling this morning time inwards Case T-7/04 Shaker di L. Laudato & C. Sas v OHIM, Limiñana y Botella, SL. Shaker applied to register the rather pretty label featured higher upwardly every bit a Community merchandise score for goods inwards Classes 29, 32 in addition to 33. After the application was whittled downwards to accept trouble organization human relationship of diverse component objections, Limiñana opposed it, citing its before Castilian registration of the discussion score LIMONCHELO for goods inwards Class 33. The Opposition Division upheld the opposition, final that in that place was a likelihood of confusion in addition to Shaker's appeal to the Board of Appeal was unsuccessful.

Shaker's appeal to the CFI nonetheless succeeded. That Court considered that the dominant chemical element of Shaker's score was non the discussion "Limoncello" but the pretty dish that decorated the middle of it. In the CFI's ain words:

"65 The figurative representation of a circular dish decorated amongst lemons is the dominant ingredient of the score claimed: it has zippo inwards mutual amongst the before merchandise mark, which is purely a discussion mark.

66 There is thus no likelihood of confusion betwixt the merchandise marks inwards question. The authorization of the figurative representation of a circular dish decorated amongst lemons inwards comparing amongst the other components of the score claimed prevents whatever likelihood of confusion arising from visual, phonetic or conceptual similarities betwixt the words ‘limonchelo’ in addition to ‘limoncello’ which appear inwards the marks at issue.

67 ... The fact that the average consumer retains exclusively an imperfect mental picture of the merchandise score renders the dominant chemical element of the score inwards inquiry of major importance ... Thus the dominant chemical element of the merchandise score claimed (the circular dish decorated amongst lemons) is of major importance inwards the overall assessment of the sign because the consumer looking at a label for a rigid alcoholic drinkable takes notice of, in addition to remembers, the dominant chemical element of the sign, which enables him to repeat the sense on the occasion of a subsequent purchase.

68 The authorization of the figurative ingredient (a circular dish decorated amongst lemons) inwards the score claimed agency that inwards this representative the assessment of the distinctive elements of the before merchandise score does non acquit upon the application of Article 8(1)(b) of Regulation No 40/94. Although the grade of distinctiveness of an before discussion score may acquit upon the assessment of the likelihood of confusion ..., that requires that in that place be, at the really least, some likelihood of confusion betwixt the before merchandise score in addition to the score claimed. However, it is clear from the overall assessment of the likelihood of confusion betwixt the merchandise marks at number that the dominance, inwards the representative of the score claimed, of a circular dish decorated amongst lemons prevents in that place beingness whatever likelihood of confusion amongst the before merchandise mark. Consequently, in that place is no withdraw to adjudicate on the distinctiveness of the before merchandise score ...

69 In the lite of those considerations, ... notwithstanding the fact that the goods concerned are identical, in that place is non a sufficiently high grade of similarity betwixt the merchandise marks inwards inquiry for a finding that the Castilian reference world mightiness believe that the goods inwards inquiry come upwardly from the same project or, every bit the representative may be, from economically-linked undertakings. Accordingly, opposite to OHIM’s finding inwards the contested decision, in that place is no likelihood of confusion betwixt them inside the pregnant of Article 8(1)(b) of Regulation No 40/94".

agrees in addition to hopes that this approach volition hold upwardly followed consistently yesteryear all the OHIM Boards in addition to the CFI itself -- peculiarly where the before score is the figurative score containing a word, where it looks to the untrained observer every bit if the proprietor, yesteryear registering such a mark, effectively gets 2 merchandise marks for the toll of one. Merpel says, why create in addition to so many oppositions seem to involve before Castilian registrations, or is it but a mirage?

Limoncello here and here
Make your ain Limoncello here
Lemon Cello here