INTA to EU: Similarity of Alcoholic and Non-Alcoholic Beverages Varies

Published: April 7, 2021

Marina Perraki Tsibanoulis & Partners Law Firm Athina, Greece Chair, International Amicus Committee—Europe Amicus Subcommittee

INTA filed an amicus brief, as third-party observers, before the Grand Board of Appeal (GBoA) of the European Union Intellectual Property Office (EUIPO) on April 1 in a case concerning similarity or dissimilarity of alcoholic and non-alcoholic beverages. Case R 964/2020-4, EUROMADI IBERICA, S.A./ Zorka Gerdzhikova.

In case R 1720/2017-G, Iceberg, January 21, 2019, the GBoA ruled that “mineral water and aerated water; non-alcoholic beverages; fruit beverages and fruit juices” were dissimilar to vodka. However, at least one diverging decision followed: in its decision of January 20, 2020, case R 2524/2018-4, chic ÁGUA ALCALINA 9,5 PH/Chic Barcelona, the GBoA found similarity between alcoholic and non-alcoholic beverages, albeit to a low degree.

This disparity of rulings reflects varying consumer perception resulting from changes in market realities (new types of drinks, convergence of alcoholic/non-alcoholic drinks, new strategies of promotion and marketing) and justified the issue’s referral, for the second time, to the GBoA.

In its amicus brief, INTA submitted that considerations in the earlier decisions may no longer be consistent with market practice and the perception of the relevant public.

INTA’s Position

INTA argued that it should not be relevant whether the public is generally capable of distinguishing goods in Class 32 (non-alcoholic beverages, including flavored carbonated beverages, waters and vitamin-enriched sparkling water, as well as beers) from those in Class 33 (alcoholic beverages except beers, including wines, spirits, liqueurs, and alcoholic preparations for making beverages).

It also said that similarity should not be ruled out simply because it is assumed that alcoholic beverages are intrinsically dissimilar from non-alcoholic beverages.

The Association asserted that the assessment of similarity between goods in Classes 32 and 33 must be done on a case-by-case basis, considering the relevant factors, including current market practices and habits, for the goods at stake. It is no longer appropriate to determine, as done in previous case law, that only in “extremely specific individual cases” can those goods be found dissimilar, it said.

The Canon Factors

In its brief, INTA stressed that, under the relevant case law, all relevant factors should be taken into account in the assessment of similarity between the goods or services. Those factors include the nature of the goods or services, their intended purpose, method of use, and whether they are in competition with each other or are complementary. See CJEU judgment of September 29, 1998, case C-39/97, Canon/Cannon.

Other factors may be taken into account, such as the distribution channels of the goods concerned. See, to that effect, the General Court’s judgment of July 11, 2007, El Corte Inglés v OHIM—Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T443/05, EU:T:2007:219), their usual origin (producer/provider), and the relevant public (which, in the case at hand, is the public at large).

Applying the Canon factors to the goods at issue, INTA concluded in the brief that it is not necessary for all criteria to be fulfilled for similarity to be found. Conversely, if only some criteria are fulfilled, this is not enough to dismiss similarity. Furthermore, there is no indication in the case law of the Court of Justice of the European Union that some of the criteria are more important than others.

INTA noted that judicial bodies have reached different conclusions when starting from a different assessment on factual issues, such as whether alcoholic and non-alcoholic beverages are sold next to each other in retail shops.

Intertwined Boundaries

The boundaries of goods in Classes 32 and 33 are intertwined (classification serving in any case administration purposes only pursuant to Article 33(7) of the European Union Trade Mark Regulation). The interplay is confirmed in the EUIPO Guidelines, which state that “when comparing specific alcoholic beverages and specific non-alcoholic beverages, such as alcohol-free wine in Class 32 and wine in Class 33 … [, if] these goods target the same relevant public, share the same distribution channels and can be produced by the same undertakings, they are similar.”

Current market practice shows that the alcoholic beverages industry is increasingly moving toward non-alcoholic or low alcoholic alternatives. At the same time, a tendency of soft drink manufacturers is toward manufacturing and selling alcoholic variations on their soft drink products. Pre-mixed alcoholic with non-alcoholic drinks are also widely sold.

In its conclusion, INTA said that the case provides an opportunity for clarification for a finding of similarity between (certain) Class 32 beverages and (certain) Class 33 beverages, noting “this will serve the interest of both brand owners as well as consumers, for example, in terms of future brand strength/scope of protection, registrations and enforcement strategies, given the convergence between the alcoholic and non-alcoholic beverages sectors (alcoholic sector moving to non-alcoholic versions and non-alcoholic sector moving to alcoholic drinks).”

The authors of the amicus submission are Fleur Folmer (NautaDutilh N.V., the Netherlands) and Marina Perraki (Tsibanoulis & Partners Law Firm, Greece), a member and the chair, respectively, of the International Amicus Committee—Europe Amicus Subcommittee, in collaboration with the Trademark Office Practices Committee—EUIPO Subcommittee.

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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