CHEERS! About Similarity between Beers and other Beverages
When you go out to eat and you choose a drink with your meal, would go for mineral water, wine or beer? The answer, of course, depends on your individual preferences and habits. However, when it comes to trademarks, the question might become of interest when the degree of similarity between mineral water, wine and beer has to be assessed and decided in infringement, opposition or invalidity proceedings. The decisions of the different trademark offices and courts are not always consistent and often unpredictable. At least regarding the degree of similarity between “beers” and other beverages, you may now find some guidance by the European Union Intellectual Property Office (EUIPO).
In the context of its Boards of Appeal Action Plan 2021-2026, the EUIPO has published six (6) reports to date which aim at enhancing consistency, coherence and predictability of the work of the Boards of Appeal. The documents reflect existing case law from the Court of Justice, the General Court and the Boards of Appeal, but have no binding effect. However, by identifying and analyzing relevant case law on a specific topic, they intend to enhance predictability of decisions and legal certainty by increasing knowledge, awareness and transparency among the various stakeholders.
So far, the Boards of Appeal Case-law Research Reports have analyzed the following issues:
- The distinctive character of slogans
- Trademarks contrary to public policy or accepted principles of morality
- Similarity between foodstuffs/drinks and services for providing food and drink
- Proof of technical function of a design under Article 8(1) CDR
- Identification of the features of a design under Article 8(1) CDR
- Similarity between beers and other beverages
All reports are available on the EUIPO website at https://euipo.europa.eu/ohimportal/en/boards-of-appeal.
The latest Research Report
The latest research report focuses on the comparison between „beers“ as contained in Class 32 of the Nice Classification and “other beverages” of all kinds contained in Classes 29, 30, 32 and 33 like
- milk and milk-based beverages (Class 29),
- beverages with coffee, cocoa, chocolate or tea base (Class 30),
- any non-alcoholic beverages including mineral waters and fruit juices (Class 32),
- any alcoholic beverages including wine (Class 33).
After analyzing current trends in case law of the Court of Justice, the General Court and the EUIPO’s Boards of Appeal including discrepancies in the degree of similarity found by the different bodies, the research report suggests the following degrees of similarity:
- a high degree of similarity between „beers“ and „non-alcoholic beverages“ of Class 32 in general,
- a high degree of similarity between “beers” and “alcoholic beverages, except beers” [general category] in Class 33;
- a high degree of similarity between “beers” and low-alcohol content beverages in Class 33 such as “cider, perry and alcopops”;
- an average degree of similarity between „beers“ and specific non-alcoholic beverages in Class 32 such as „mineral waters, juices, soft drinks, energy drinks“,
- a low degree of similarity between “beers” and “wines”;
- a low degree of similarity or dissimilarity between “beers” and high-alcohol content spirits and liqueurs;
- dissimilarity between „beers“ and „non-alcoholic beverages“ in Classes 29 and 30 such as „coffee, tea, cocoa, milk-based beverages“.
When assessing the similarity of goods and services in trademark infringement, opposition or invalidity proceedings, all relevant factors relating to those goods and services need to be considered. It is settled case law that these factors include, in alia, their nature, their intended purpose, their method of use, whether they are in competition with each other or are complementary, the distribution channels of the goods or services concerned, and whether or not the relevant public might consider it usual for the goods at issue to be sold under the same trademark. If the latter is not the case, this is a strong indication that there is no similarity between them.
When discussing all of these factors in arguing a specific degree of similarity between “beers” and other beverages, the latest research report of the Boards of Appeal can serve as guidance. It should, however, not be taken as a fact since market practices and the consumers’ perception of market practices can change over time – and this may also change the result of the comparison of “beers” and other beverages. CHEERS!
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