Brandy Branding

Beer & Brandy

The EUIPO Board of Appeal ruled that beer and brandy cannot be regarded as similar goods for the purposes of trademark law.

The appeal concerns an opposition initiated by E & J Gallo Winery, one of the biggest American wine producers and also holder of the EU word mark ‘E & J’, registered for ‘beers’ and ‘alcoholic beverages’. Using this trademark registration as a basis, E & J Gallo Winery sought to prevent the registration of a figurative mark by Eggers & Franke, who aimed to register a figurative mark ‘E & F’ for a variety of goods and services, also including ‘beers’ and ‘alcoholic beverages’.

Despite the different second letter, the Board accepted the argument that the signs are similar, noting that “a non-negligible part of the public” will perceive the last letter of the contested sign as the letter ‘J’, due to the highly stylized fond.

Similarity between goods?

With regard to similarity between the goods, proof of genuine use was requested for the earlier mark. E & J Gallo Winery was only able to prove genuine use for ‘brandy’, which is considered part of ‘alcoholic beverages’. As only proof of use was delivered for brandy, it was the question if there's similarity between ‘brandy’ on the one hand, and ‘beers’ and ‘alcoholic beverages’ on the other?

 

The Board found no similarity between ‘brandy’ and ‘beers’: considering that both types of beverages have entirely different production processes, methods of use and percentages of alcoholic content, these goods cannot be seen as complementary to each other or as competing with each other. In fact, “there is indeed nothing to support the conclusion that a purchaser of one of those products would be led to purchase the other.” The Board also referred to the differences in ingredients, colours, smells and tastes. Overall, these goods must therefore be considered dissimilar.

Earlier caselaw also ruled that tequila and beer are considered dissimilar goods. Also, Red Bull proceeded with ‘RED BULL VERLEIHT FLÜÜÜGEL’ (“Red bull gives you wings”) against the shots of ‘FLÜGEL’. The General Court found that energy drinks and alcoholic beverages are not similar, despite the fact that they are often mixed together. Red Bull was later able to succeed by using a different legal basis, namely by arguing that the ‘FLÜGEL’-trademark was taking unfair advantage of Red Bull’s reputation (‘free-riding’).