INTA as Friend of the Court: EUIPO GBoA Issues Decision in ZORAYA Case

The International Amicus Committee helps INTA fulfill its advocacy mission by providing expertise concerning trademarks and complementary intellectual property laws to courts and trademark offices around the world through the submission of amicus curiae (“friend of the court”) briefs or similar filings, playing a neutral role and addressing only the legal issues of the cases.

Over the past three years, INTA has filed 13 briefs in Europe alone: seven before the Court of Justice of the European Union and six before the EUIPO Grand Board of Appeal (GBoA), in addition to those in other regions.

With regard to the GBoA, INTA has acted according to the procedure set forth in Article 37(6) of Commission Delegated Regulation (EU) No. 2018/625. Article 37(6) allows interested groups or bodies to intervene in appeal proceedings referred to the GBoA, which are usually cases involving disputed legal issues that have given rise to diverging court decisions.

Earlier this year, the GBoA decided the first case in which INTA had filed a such a brief, i.e., Case R 964/2020-G, EUROMADI IBERICA, S.A. v. Zorka Gerdzhikova, addressing the highly controversial issue of similarity between alcoholic beverages and non-alcoholic beverages.

As a brief summary, the conflicting marks in this case were, on the one hand, an EU trademark application for the sign ZORAYA in connection with “non-alcoholic beverages, flavoured carbonated beverages, waters, vitamin enriched sparkling water” in Class 32 and, on the other hand, an earlier Spanish trademark for VIÑA ZORAYA registered for “wines, spirits and liqueurs” in Class 33; and that, by the interim decision of November 25, 2020, the Fourth Board of Appeal referred the case to the GBoA in light of the contrasting decisions on the issue of similarity between alcoholic beverages and non-alcoholic beverages.

INTA saw the referral above as an opportunity to challenge the adoption of rigid a priori rules in the assessment of similarity of goods/services. Such rules, in INTA’s view, might negatively affect both market players and consumers.

Therefore, on April 1, 2021, INTA filed a brief in which it argued that there is no justification for a priori conclusions that there is a fundamental dissimilarity between Class 32 and 33 goods, but rather that the assessment of similarity between goods in these two classes must be done on a case-by-case basis, taking into account, among other things, current market practices and consumer habits related to these goods.

In particular, INTA maintained that a rigid approach to comparing the similarity between Class 32 and 33 goods is no longer consistent with current market practices, which have led relevant consumers to see non-alcoholic drinks as alternatives to alcoholic ones. INTA pointed out that “one of the factors that should be taken into account … is that the trends of the beverages industry suggest a move towards more no- and low alcohol beverages, a.k.a. ‘nolo’ beverages.”  INTA suggested that the GBoA “make a detailed assessment and find similarity to a certain extent with respect to all or at least part of the goods covered by the marks at issue rather than ruling out such similarity simply because there would be a ‘fundamental dissimilarity’ between the two sets of goods concerned.”

The GBoA followed INTA’s advice.

In its decision of April 13, 2022, the GBoA—making ample reference to INTA’s submission and following the relevant lines of reasoning—held that “the comparison of goods and services is not in stone.” Since the point of reference of the comparison is the perception of the relevant public that may vary over time, the relevant outcome may vary over time due to market realities. The GBoA carried out a thorough assessment of the case—valuing INTA’s input with respect to the “nolo” trend in the beverages industry—and reached a conclusion that partially deviates from its previous decisions, i.e., that “non-alcoholic beverages” and “aromatized carbonated beverages” are at least slightly similar to “wines, spirits and liqueurs.”

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. 

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