Evaluation criteria between products: are alcoholic beverages and energy drinks similar?

by Redazione / Monday, 29 October 2018 / Published in CASE LAW AND TRADEMARK, EUROPEAN UNION TRADEMARK

Can alcoholic drinks and energy drinks be considered similar products?

It seems they cannot, on the basis of the judgment of the General Court in case T-150/2017, 4 October 2018.

Evaluation criteria between products

The case of Red Bull

Red Bull GmbH, owner of the Austrian trademarks VERLEIHT FLÜGEL and RED BULLVERLEIHT FLÜÜÜGEL, both registered in class 32 for “energy drinks”, had filed an application for a declaration of invalidity of EU trademark FLÜGEL owned by Asolo Ltd, registered both for products in Nice Class 32 (beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparation of drinks”) and in class 33 (alcoholic drinks except beers).

The most interesting point of this matter is to see if alcoholic drinks and energy drinks can be considered similar products, given that similarity between energy drinks and non-alcoholic drinks in class 32 was not even denied recognized also by the owner of the contested trademark.

Do you want to know which criteria are used by EU case law for the evaluation of similarity between the products? Read here!

With regard to the alcoholic drinks, instead, Asolo ltd highlights in its defense that Red Bull has always claimed that its product makes its consumers more energetic and alert, the opposite effect of consuming alcoholic drinks,

“so that a consumer wishing to remain alert, such as a driver, would not consider substituting an alcoholic drink for a non-alcoholic energy drink”.

The General Court considers that there is not similarity between the two categories of products and notes that although

“a very large number of alcoholic and non-alcoholic drinks are generally mixed, consumed, or indeed marketed together, either in the same establishments or as premixed alcoholic drinks”,

it is not correct

“to consider that those goods should, for that reason alone, be described as similar, when they are not intended to be consumed in either the same circumstances, or in the same state of mind, or, as the case may be, by the same consumers” (paragraph 80 of the decision).

The General Court, moreover, points out that previous judgements had already established that the average German consumer was accustomed and careful to the separation between alcoholic and non-alcoholic beverages, since certain consumers do not wish, or even cannot, consume alcohol (judgment of 15 February 2005, Lindenhof, T-296/02 and judgment of 18 June 2008 MEZZOPANE, T-175/06).

For the above reasons the application for the declaration of invalidity has been accepted only for class 32 and not for class 33.

A curiosity about the choice of the classes

We have seen that in this case Asolo asked the registration of its trademark in classes 32 and 33.

We can take a cue from this case to ask a question: how does the choice of the Nice classes happen?

The first answer is the most obvious: first of all, it is necessary to draw up a list of the products (and/or services) which will be identified by your brand and, taking Nice Classification in your hands, you should determine in this way the classes of your interest.

The choice of the class based on the products (or services) distinguished by the mark is certainly necessary, but may not be the only criterion orienting the choice of the applicant.

Another assessment may be the request of protection in a class which at the moment is not relevant for us but which could be of interest in the future, or which you want to preserve from competitors. For example, I produce sandwiches and foodstuff but I do not want the presence of a competitor who registers a brand similar to mine in catering sector: I also protect my brand in class 43 (which claims, in fact, restaurant and catering services). It is true, moreover, that a trademark must be used within a determined time from its registration, but it is also true that, for example, I could grant a license in order to allow other subjects to use the mark.

There are many factors to take into consideration when choosing the Nice classes: our suggestion is always to get in touch with a consultant in IP or a lawyer dealing with industrial property.