As readers may recall, the General Court rendered a judgment around two years ago in the Asolo v Red Bull case (known under FLÜGEL – T-150/17 of 4 October 2018) ruling on similarity, or rather dissimilarity, between alcoholic and non-alcoholic beverages. While the FLÜGEL case concerned specifically energy drinks vs. alcoholic drinks, the General Court made a reference to previous decisions in which it had held that “the average [German] consumer is used to and aware of the distinction between alcoholic and non-alcoholic drinks” (LINDENHOF, T‑296/02, para. 54 and MEZZOPANE, T‑175/06, para. 80) and concluded that the same applied to energy drinks and alcoholic drinks. As a result, they were held dissimilar.
At the time, the by far prevailing opinion was that alcoholic and non-alcoholic beverages were similar for the purposes of assessing likelihood of confusion. This opinion was also supported by prior GC case-law (see, for example, T‑421/10 of 5 October 2011, Rosalia de Castro; T-278/10 of 21 September 2012, WESTERN GOLD; or T‑557/14 of 1 March 2016, SPEZOOMIX) – less isolated cases than the contrary opinion (such as LINDENHOF or MEZZOPANE cited above, but also MONTEBELLO RHUM AGRICOLE, where rum and wine, both pertaining to class 33, had been held “manifestly different” (T‑430/07 of 29 April 2009, para. 37)). The reasoning behind the similarity between alcoholic and non-alcoholic beverages was not that consumers could not tell them apart – they can, indeed, just like they can distinguish belts and pants, and yet the two are similar in law. These admittedly different types of beverages are marketed and consumed together, and not rarely are pre-mixed drinks traded under the same brand as the alcoholic or non-alcoholic beverage on its own. The FLÜGEL judgment therefore came as a surprise. Even more surprisingly, almost immediately after that judgment, the EUIPO adapted its Guidelines to this new judgment, categorically declaring alcoholic and non-alcoholic beverages to be dissimilar. And to top this off, in January 2019, the Grand Board rendered its decision in the Iceberg case (R 1720/2017-G of 21 January 2019), holding that vodka was dissimilar to mineral water and aerated water, non-alcoholic beverages, fruit beverages and fruit juices. While the Iceberg case concerned specifically vodka, it was remitted to the Grand Board because the Boards of Appeal had issued diverging decisions not only concerning the goods at stake but also class 32 and 33 goods in general. Sure enough, the Office Guidelines soon cited also this Grand Board’s decision in support of the newly declared dissimilarity between non-alcoholic beverages and alcoholic beverages in general.
One would have thought that this shut the door to any opposition or invalidity action based on likelihood of confusion where the rights in conflict covered non-alcoholic beverages, on the one side, and alcoholic beverages, on the other side, and that only reputation could help to preserve exclusivity. [On the side – the FLÜGEL case has meanwhile been resolved in favour of Red Bull, who could show the reputation of its (German version of) GIVES YOU WINGS slogan, on which the later FLÜGEL (“wings”) mark traded.]
However, the world is full of surprises, and so are the EUIPO Boards of Appeal. Two years have passed since the judgment in the FLÜGEL case and this author thought it was time to see how the EUIPO case law had developed.
The research revealed eight relevant decisions rendered by the Boards of Appeal since the Iceberg case. In six of these (75%!), the Boards of Appeal concluded a low degree of similarity between non-alcoholic beverages and alcoholic beverages. Interestingly, in one of those cases, the Board of Appeal went even further and found a low degree of similarity between waters and alcoholic beverages (R2524/2018-4 of 20 January 2020). This case is now pending before the General Court (T-195/20) and the author is curious to see which stance the General Court will take this time and whether the pendulum might swing back again to impact on the EUIPO practice.
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The issue of similarity of goods is difficult to assess in a coherent way, on the one hand because the combinations are manigfold, and on the other hand not all the relevant facts are well-known facts and the parties also have their burden of proof (Article 95(1) EUTMR). For example, in view of the function of origin, it is probably not the same to compare water and vodka or wine and grappa. There are two cases of the Grand Board: for vodka and water (Iceberg v Iceberg, dissimilar) and for wine and rum (Papagayo v Papagayo organic, low degree of similarity if at all). The example given of Lindenhof v Linderhof falls short, as the argument on the common origin of fruit wine and fruit juice was presented late before the General Court (para. 53). (disclaimer: this is my personal opinion).
Thank you very much for your comment, Philipp. I agree of course that the similarity of goods (or services) is difficult to assess in a homogenous way, and that a case by case assessment, as was the practice until the FLÜGEL judgment, is the best way forward. The Office, however, appears to have adopted a rather general approach when the Guidelines were changed based on a single, very case-specific, GC judgment – and the Iceberg decision by the Grand Board seemed to further support the change in the Guidelines.
As long as the statements in the various decisions can be reconciled based on the understanding that the facts may change from case to case, practitioners can advise their clients reasonably well. It becomes problematic when the Office aims to harmonize a certain legal topic to then deviate from its own rules.
This case of the “Verleiht Flügel” trademark isn’t over yet! We did appeal the EUIPO Board of Appeal decision on the claim for protection for a trademark with a reputation, which Red Bull as such may have, but this alleged trademark not. The hearing before the General Court is this Thursday.
Apart from the problem of ex oficio examination in relative grounds cases and the corresponding obligations of the parties to allege facts and evidence in case they are not well-known, there is a further problem of the bad faith practice of many applicants that apply for goods that they do not intend to sell. “Alcoholic beverages” for example should not be allowed as being too broad. I am not aware of any brand that uses a trade mark through a broad range of alcoholic beverages.