Sunday, February 19, 2012

Rival Victorias battle for trademark in Transatlantic beer dispute

By Professor Jeffery Atik

On January 31, in yet another Transatlantic beer conflict, Europe's General Court upheld the determination of the European Trademark Office (OHIM) to deny the trademark registration of "Victoria de Mexico", a long-established beer brand from Mexico. Case T-205/10. Grupo Modelo, the owner of Victoria de Mexico, launched the Victoria de Mexico brand in the United States in 2010 and hoped to replicate this success in Europe. It shall not be. The European trademark application for "Victoria de Mexico" was rejected, due to the successful opposition of a rival Spanish beer, known as "Victoria". The Spanish Victoria has been marketed since 1928, and has held trademark registrations in Spain and Europe since 1994 and 2002 respectively.

Article 8(1)(b) of the European Trademark Regulation states that a trademark shall not be registered in the event of an opposition by a prior trademark proprietor where "because of its identity with or similarity to the earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected . . ."

The General Court upheld the Trademark Office's finding that the proposed "Victoria de Mexico" mark would cause a likelihood of confusion, including a likelihood of association, with the existing "Victoria" brand.

The General Court noted that the two marks -- "Victoria de Mexico" and "Victoria" -- would apply to the same product: beer. Given the identical product space, the likelihood of confusion is considerably heightened. In examining the two marks for similarities, the General Court, following European precedent, divided its analysis into three parts: visual, phonetic and conceptual. Further, the Court explicitly considered the perception of the marks by two idealized European beer consumers: one who understands Spanish (or another Romance language or even -- perhaps -- English) and one who does not. The challenge of protecting traditional trademarks, rooted in particular national languages, which now function across the multilingual European market is deftly explored.

In reviewing the two marks for visual similarity, the General Court concludes that the word "Victoria" is dominant in each -- and that the various other figurative elements found in the two marks are "common" and "banal". One trusts the two graphic artists have passed on, and so escape the sting of the General Court's evaluation of their work.

The "phonetic" analysis is fairly straight forward: the European consumer calling for a pint would simply utter "Victoria" and abandon the distinguishing "de Mexico" due to economy, if not inebriation. Which of course would be the same shout-out for the Spanish rival product.

But it is the Court's "conceptual similarity" analysis that is most intriguing. Consider the phrase "Victoria de Mexico". A Spanish consumer will understand the word "victoria" to mean "victory". So likely would an Italian-, Portuguese-, French- or even English-speaker. But even for such a consumer, the phrase "Victoria de Mexico" is ambiguous. It might refer, as the applicant argues, to the "Victory of Mexico", as in the historic military triumph of the emergent Mexican State against the Spanish crown. (The General Court declines to note the irony that the hoped-for Victory of Mexico against the Spanish interest is frustrated in its ruling.)

But "Victoria de Mexico" might be understood by the Spanish-speaking consumer simply as Victory-brand beer imported from Mexico. That is, the phrase "de Mexico" happens to be a commonplace expression denoting Mexican origin. Read thus, the "de Mexico" phrase loses its ability to meaningfully distinguish the two brands, as the Spanish-speaker may understand each mark to represent Victory-brand beer.

What then about the greater number of European consumers who know little or no Spanish? The General Court suggests these consumers are likely to understand "Victoria" to be a woman's name -- a rather fanciful mark for a brand of beer (though no more fanciful than Mercedes, which is simply a particular woman's name). For these consumers, the "Victoria" part of the "Victoria de Mexico" locution is likely all they would see, understand or remember.

The Spanish brand may have a specific historical referent as well: the Victory of Malaga by the Catholic Kings against the Moors. Or not. Victoria, Vittoria, Victoire, Victory -- these are common marks found on a range of products (recall Victoria's Secret). But we are not referring to a generic victory, say the Mexicans. We are invoking a specific, historic victory -- la victoria de Mexico -- which should distinguish our beer from beers recalling generic victory or Queen Victoria or even "la Victoria de Malaga". Not so, says Europe's General Court.

Thanks to Jack Cooper and Luke Fisher for research assistance.

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