Limoncello is a generic term for a type of Italian lemon liqueur. However, in Shaker di L. Laudato & C. Sas v. OHIM, the (European) Court of First Instance held that Shaker’s design mark, which prominently featured the word ‘Limoncello’, was confusing with the earlier Spanish word mark ‘Limonchelo’. The Court reached this decision by finding the word ‘Limoncello’ to be the dominant feature of the Shaker mark with the other features being negligible or secondary. The Court then stressed the phonetic and conceptual similarities of these words and, given that both marks represented the same type of goods, concluded that there were certain similarities leading to a conclusion that the Shaker mark was in fact likely to confuse. The Court gave little weight to the fact that Limoncello is a common and descriptive term.
|Earlier trade mark||Trade mark applied for|
(Table reproduced from judgement)
This is the second time this case has been before the Court of First Instance. Initial decisions came from the Opposition Division and the Second Board of Appeal, who both found against Shaker. An appeal from those results lead to the first decision by the Court of First Instance where they found the visual elements of Shaker’s design mark to be the dominant feature and thus concluded that there could be no confusion. That decision was appealed to the Court of Justice who then remanded the decision back to the Court of First Instance for a second time, giving us the present decision.
The Court of Justice stated that by not examining the phonetic and conceptual features of the marks, in addition to the visual features, the Court of First Instance had erred by failing to “carry out a global assessment of the likelihood of confusion”.
In revisiting the issue, it seems as though the Court of First Instance has swung back too far in the opposite direction by putting too much emphasis on the phonetic and conceptual similarities of the single word element ‘Limoncello’ at the expense of the distinctive visual elements – which it all but ignored this time around.
This led the Court to engage in a comparison of ‘Limonchelo’ versus ‘Limoncello’ thus losing sight of not only all the other elements in Shaker’s mark but the significant fact that ‘Limoncello’ is discriptive. Instead of weighing the weak distinctive character of that term, the Court washed its hands of the matter by stating that a weak distinctive character would only be one factor among others. After acknowledging that the lower Board of Appeal had (perhaps wrongly) not examined the issue, the Court did not even explicitly make a determination as to the mark’s weak distinctive character.
Far from making a “global assessment”, the Court has made a very narrow assessment which, beyond any legal theory, has had the result in practice of awarding a monopoly over the generic term Limoncello in instances where it plays any significant role in a competing mark.
Interestingly, in Canada the trade mark ‘Limoncello’ alone is registered (though the LCBO’s website does list a couple of brands for sale). In the US there are several marks for lemon liqueurs all incorporating the limoncello term and coexisting together; the descriptive term ‘Limoncello’ typically being disclaimed.