On the basis of its European Union Trademark Registration THOREAU protected for “bottles, bottle cases, dish drainers and non-alcoholic beverages”, the Opponent filed an opposition against a French trademark application THOREAU (word mark) designating “spirit-based beverages containing rum and cognac.”

In its decision of November 18, 2021, the French National Institute of Industrial Property (hereinafter INPI) concluded that there was a likelihood of confusion and therefore upheld the opposition.

In addition to the strict identity between the signs, the INPI considered that the “spirits-based beverages containing rum and cognac” claimed in the application are linked, on one hand, to the “bottles and bottle cases” protected by the prior trademark, as the former are stored, presented and consumed via bottles, which are in turn stored in crates provided for that purpose.

Further, the INP found these goods to be similar to the “non-alcoholic beverages” protected by the prior trademark as all constitute beverages and are likely to be consumed at the same times of day or in the same social circumstances.

The applicant filed an appeal before the Paris Court of Appeal. He argued that the goods designated in the application for registration are not similar to those covered by the prior mark, as they have completely different natures, functions, purposes and distribution channels.

In its decision dated January 27, 2023, the Paris Court of Appeal dismissed the appeal.

Firstly, the Court reiterated that a low degree of similarity between the designated goods or services may be compensated by a high degree of similarity between the trademarks.

In this regard, it noted that the signs in question, consisting solely of the black uppercase letters “THOREAU”, are identical.

In addition, the Court, like the INPI, considered that the “spirits-based beverages containing rum and cognac” claimed in the application like the “non-alcoholic beverages” protected by the prior trademark, both belong to the category of beverages and therefore have the same nature.

In this respect, it held that they are consumed in similar places (bars, restaurants) and may be found nearby on the menus of such establishments or on store shelves.

The Court also specified that alcoholic and non-alcoholic beverages have similar functions since, while the former are generally typically consumed during festive occasions, unlike the latter that are consumed more for hydration purposes, both types of beverages can also be mixed to create cocktails.

Finally, the Court noted that the changes in the beverage market, in particular that now aperitifs or liqueurs are marketed in non-alcoholic versions, so that the alcoholic composition of the beverage is no longer a key factor for consumers.