Differentiation of EU brands of alcoholic beverages and water

In its recent decision delivered on September 22, 2021, in case T-195/20 Sociedade de Àgua de Monchique vs. EUIPOthe CGUE settled a long-standing dispute over the similarity between waters, and by extension non-alcoholic beverages, falling within class 32 and alcoholic beverages falling within class 33 in the European Union.

In 2017, a Portuguese company filed an EU trade mark application for the figurative sign “soft drink; bottled drinking water; mineral water (non-medicated); mineral water [beverages]in class 32.

An opposition was filed on the basis of the earlier registration of “CHIC BARCELONA” and the “alcoholic beverages (except beer); wine; sparkling wines; liqueurs; spirits [beverages]; Cognacdesignated in Class 33 on the ground that the similarity between the signs and the goods in question created a risk of confusion in the mind of the public.

The Opposition Division of EUIPO upheld the opposition concerning the “soft drink(Class 32), considering that the latter goods were not very similar to thealcoholic beverages (except beer)”, but rejected the objection regarding the rest of the merchandise.

Dissatisfied with this half-hearted decision, the opponent appealed to the Boards of Appeal, which sided with the opponent, stating: “bottled drinking water; mineral water (non-medicated); mineral water [beverages]‘ were also similar, to a small extent, [to] ‘alcoholic beverages.'”

The applicant brought an appeal before the CGUE which overturned the decision of the Boards of Appeal and considered that the goods in classes 32 and 33 in question were not similar (even to a small degree) but in fact dissimilar considering, in substance, that:

  • Due to the absence of alcohol in their composition, the waters differ in their nature from the alcoholic beverages covered by the earlier mark (effects of alcohol consumption)

  • The destination and the mode of use of the goods in question are different (the waters meet a vital need)

  • The goods are not complementary because whoever buys water is not obliged to buy alcoholic beverages and vice versa

  • The goods are not in competition with each other (not substitutable)

  • As far as distribution channels are concerned, the fact that the products may be sold in the same premises does not mean that they should be considered to be similar.

Therefore, the CGUE have excluded any risk of confusion between the marks.

Ideally, this decision would put an end to the uncertainty of EU case law, which has ruled both ways over the years. However, nothing is certain. Will the GCEU and EUIPO have the same position for all types of soft drinks? If this is the case for fruit juices, nothing is certain for non-alcoholic wines and beers, which are closer to alcoholic beverages in terms of price, taste, destination and drinking time. For example, the National Institute of Industrial Property in France, which systematically establishes that non-alcoholic beverages and alcoholic beverages are dissimilar, considers non-alcoholic aperitifs to be similar to alcoholic beverages.

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