Legal Background:

In 2007, the Swedish Company Norrtelje Brenneri Aktiebolag, obtained the registration for alcoholic beverages in Class 33 of the Nice Classification as a national mark, for the following denominative and figurative sign:

The afore mentioned registration is enclosed with a disclaimer stating that “the registration does not have rights over the wording “RoslagsPunsch”. This statement was requested by the local Office as a requirement for registration, since the word “Roslags” refers to geographical part of Sweden and the word “Punsch” describes one of the goods embodied in the registration.

Pursuant writ of December 16, 2015, Mr. Hansson requested before the local Office, the registration of the denominative sign “ROSLAGSÖL” as a national trademark for the goods in Class 32 of the Nice Classification, and specifically, for non-alcoholic beverages and beers.

The local Office rejected the trademark application due to the likelihood of confusion among said mark and the prior mark.  The Office found that the subject signs both start with the descriptive term “Roslags”. The fact that it includes, among others, other words or figurative elements, it does not decrease the degree of similarity, since the word “Roslags” is the dominant element of the signs. As a related note, the signs refer to identical or similar goods which could be distributed by the same sales network and could address the same customers.

Preliminary ruling

The Swedish Court of Appeal, having its seat Stockholm (Svea hovrätt, Patent- och marknadsöverdomstolen), refers to the EU General Court of Justice, in a nutshell, the following question for a preliminary ruling: Must Article 4(l)(b) of [Directive 2008/95] be interpreted as meaning that the global assessment of all relevant factors which is to be made in an assessment of the likelihood of confusion may be affected by the fact that an element of the trade mark has expressly been excluded from protection on registration, that is to say, that a so-called disclaimer has been entered on registration?

The Judgement resolves the matter as follows:

Article 4(1 )(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as precluding national legislation making provision for a disclaimer whose effect would be to exclude an element of a complex trade mark, referred to in that disclaimer, from the global analysis of the relevant factors for showing the existence of a likelihood of confusion within the meaning of that provision, or to attribute to such an element, in advance and permanently, limited importance in that analysis.

Judgement of the Court of Justice of the EU of June 12, 2019 (Matter C705/17)