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.
I am also inclined to say that the Court has fallen short of making a “global assessment” in this case. In the decision, the Court states that “Restaurants may have several brands available and, therefore, the end consumer can still make a choice when ordering. The word ‘limoncello’ thus constitutes the dominant component of the trade mark applied for from a phonetic point of view. Therefore, there is a significant phonetic similarity between the marks at issue.”
Because of this, we can see that the Court sees the phonetic similarity as the source of any potential confusion. But is this really the case? How likely would the two types of drinks be served by the same establishment? In Italian restaurants, Limoncello would be the assumed dessert liqueur when ordered. It would be very unlikely that the Italian restaurant would also serve the Spanish Limonchelo. It would also be very unlikely that a Spanish restaurant would also serve the Italian Limoncello. So it seems the only time there would be confusion would be the following:
1) Establishment located in Spain serving both drinks.
In Spanish, the letters “ce” are pronounced like an “s” and the letters “ch” are pronounced like “ch”. So, a Spanish restaurant patron in Spain would pronounce the Italian drink Limoncello as “Limonsello” and the Spanish drink Limonchelo as “Limonchelo.” Definitely no confusion there.
2) Establishment located in Italy serving both drinks.
In Italian, the letters “ce” are pronounced like a “ch” and the letters “ch” are pronounced like a “k”. So, an Italian restaurant patron in Italy would order the Italian drink Limoncello as “Limonchello” and the Spanish drink Limonchelo as “Limonkello.” Definitely no confusion there.
3) Establishment located in the rest of the world serving both drinks.
It would be very rare for restaurants in the rest of the world to serve both Spanish and Italian Cuisine together. Doing so would not be a good business plan, since patrons generally view that a restaurant that serves multiple types of cuisines probably is not that great in either. Now, assuming the worst case scenario that an establishment does serve both Limoncello and Limonchelo. The patron, not being Italian or Spanish, would probably order with more hesitation by pointing out the desired drink on the menu, thereby eliminating any confusion. Even in the case where a patron orders a generic “Limoncello”, the server taking the order is bound to clarify which drink, especially in an establishment that prides itself by serving cuisine/drinks from both countries.
Due to differences in pronunciation in the Spanish and Italian language, as well as well as a consideration of how establishments in the rest of the world would behave, I am more inclined to agree with the first decision where it was held that there was no confusion between the two.
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