Alcoholic and Non-Alcoholic Beverages: Two Different Worlds, a Ruling that Brings Them Closer Together

Alcoholic and Non-Alcoholic Beverages: Two Different Worlds, a Ruling that Brings Them Closer Together

Last 10 March Alberto Furno from our firm spoke at an event held by “Confagricoltura di Asti” (General Federation of Italian Agriculture – Asti Section) on the topic “Wine between tradition and new frontiers – Evolution of consumption and markets between culture, brands, labels and alcohol content – Non-Alcoholic Wine and more…”.

The focus of Alberto’s talk was the recent introduction of the possibility for wine producers to produce non-alcoholic wines (which we discussed in the January issue of our newsletter) and its impact on the world of Intellectual Property. In particular, it was suggested to these producers that they also protect - when filing their future trade mark applications - Class 32, which includes beers, but also no-alcohol and low-alcohol wines.

We also drew the audience's attention to the fact that alcoholic beverages and non-alcoholic beverages, though products that are often found on the same table, can hardly be considered similar when it comes to decisions by trade mark offices. This has been the situation until now.

Now, a recent decision of the Opposition Division of the EUIPO (European Union Intellectual Property Office) - upheld on appeal - has, in fact, stated that there is a degree of similarity between alcoholic beverages and non-alcoholic beverages.

The EUIPO’s line of reasoning that led to this decision is outlined below.

In 2021, the Malaysian company Agate Integrated Engineering SDN BHD filed an application for the word mark “KINGSMAN” to distinguish goods in Class 32: Alcoholic beer, ale, lager, stout and porter; craft beer; dark beer; flavored beers; low-alcohol beer; maize beer; malt beer; preparations for making beer; shandy; light beer; beer-based cocktails; fruit-flavored beer; malt beverages; mineral and aerated waters and other non-alcoholic drinks; non-alcoholic beer, ale, lager, stout and porter; fruit drinks and fruit juices; beer, ale, lager, stout and porter-based alcoholic beverages; non-alcoholic beverages containing beer, ale, lager, stout and porter; syrups and other preparations for making beverages.

In 2022, the British company Marv Studios Limited filed an opposition with the EUIPO against the trade mark “KINGSMAN”, on the basis of their own identical trade mark “KINGSMAN”, which, however, had been registered for goods in Class 33, including, inter alia, alcoholic beverages except beers and wine.

The EUIPO Opposition Division, at first instance, partially upheld the opposition, finding the marks partially similar in terms of goods.

In fact, the Division found that Marv Studios Limited's alcoholic beverages were similar to beers, low-alcohol beers and other non-alcoholic beverages covered by the contested trade mark, as they can be distributed through the same distribution channels and to the same consumer.

The only goods of the contested trade mark for which no similarity was found were the following: mineral and aerated waters; fruit drinks and fruit juices; preparations for making beer; syrups and other preparations for making beverages.

In July 2024, the company Agate Integrated Engineering SDN BHD filed an appeal with the EUIPO Board of Appeal against the EUIPO Opposition Division’s decision.

The Board of Appeal upheld the EUIPO first instance decision on the following grounds.

The Board of Appeal first noted that the goods included in Class 32 are everyday consumer goods, purchased at affordable prices, which are normally distributed on a large scale from various sources (from the food section of a department store to bars and cafeterias) and which appeal to the general public with an average level of attention. Similarly, the opponent's goods in Class 33, which may include goods of relatively affordable prices and/or lower alcohol content, are primarily targeted at the general public, which is likely to show a medium degree of attention.

The relevant public, a factor to be taken into account in the opposition, is - therefore - the same.

In order to make its reasoning more fluent, the Board of Appeal drew a distinction between alcoholic and non-alcoholic beverages subject to opposition.

It therefore first compared the following goods:

The Board of Appeal took the view that the alcoholic beer and alcoholic goods of the Applicant’s trade mark – including low-alcohol beers – should be considered similar to the alcoholic beverages of the Opponent’s trade mark. The decision states, in fact, that ‘those beverages have a very similar degree of alcohol, are interchangeable and have the same distribution outlets as beer’.

Alcoholic beverages and beers were therefore considered similar.

The Board of Appeal did not, however, wish to establish a general rule that a similarity must be found whenever the beverage, whether included in Class 32 or 33, has an alcohol component. Such reasoning would, in fact, be hazardous because in the absence of alcohol, no similarity would be found.

The Board of Appeal kept this logic in mind when comparing the remaining goods under opposition:

The Board of Appeal submits that, theoretically, given the absence of alcohol in their composition, those goods in Class 32 should be considered different from the goods covered by the earlier mark in Class 33 for the following reasons: ‘The presence or absence of alcohol in a beverage is perceived as a significant difference as regards the nature of the beverages in question by the general public of the European Union as a whole. Members of the general public of the European Union are observant and differentiate between alcoholic and non-alcoholic beverages even when they choose a beverage on impulse’.

However, as mentioned earlier, the presence or absence of alcohol in the beverage cannot be the only determining factor.

In fact, the Board of Appeal maintains that non-alcoholic beers or non-alcoholic beverages - on the one hand - and alcoholic beverages - on the other hand - can be consumed on the same occasions.

Although alcoholic beverages are generally intended to be savoured or tasted and are not intended to quench the consumer’s thirst, it is not unusual for there to be diners who cannot or choose not to consume alcohol. Consequently, it must be held that, in the present case, all the goods covered by the trade marks in question can be consumed in the same circumstances.

Furthermore, it is stated that such products may also be marketed in the same outlets (supermarkets, specialised shops), in the same areas of the supermarket, in the same restaurants and in the same bars.

For these reasons, the Board of Appeal recognised a degree of similarity, albeit minor, between non-alcoholic beverages and alcoholic beverages.

It should be noted that the Italian case-law has not yet adopted this approach, ruling that there exists a dissimilarity between alcoholic beverages (in particular wine) and beverages without alcohol content. It is to be hoped that the EUIPO ruling may be only the first to recognise a similarity between these products.

In any case, the decision of the EUIPO Board of Appeal is a very important milestone for trade mark owners operating in the beverage sector and may come to the rescue of those who - due to the recent introduction of non-alcoholic wines - are going to seek protection for non-alcoholic or partially non-alcoholic wines in Class 32 in the event of a conflict with trade marks that distinguish wine tout court.

Our professionals are at your disposal to investigate this issue and assess the existence of potential conflicts between trade marks in Class 32 and trade marks in Class 33.