[Guest post] Comparison of wine and gin: the EUIPO’s unquestionable Similarity Tool

Are wine and gin similar?

There is no use in preparing your finest arguments, for it seems that your opinion and reasoning on the matter may now hold no weight for the European Union Intellectual Property Office (EUIPO). Only what its ‘Similarity Tool’—the instrument it uses to compare goods and services in trademark proceedings—declares seems to be of significance to the Office. Indeed, as the Cancellation Division held in a decision dated October 24, 2024, the Similarity Tool “must be followed by examiners” (Case No. 000055634).

Only yesterday a decision-support tool for examiners, has the Similarity Tool now become a tool that makes decisions in place of the examiners?

In this case, the applicant for a declaration of invalidity filed a request for a declaration of invalidity against European Union trade mark (EUTM) No. 18 664 521 ‘SYMPHONY 6’ (word mark) registered in class 33 for “alcoholic beverages, namely gin and gin-like spirits”. The application was based on German trade mark registration No 1 119 686 ‘SYMPHONIE’ (word mark) registered in class 33 for “wine; sparkling wine”.

The applicant claimed there is a likelihood of confusion between the two trade marks, arguing that wine and gin are similar. To support this, the applicant referred to the Similarity Tool, contending that, according to this tool, win and gin are similar.

The Cancellation Division acknowledged that the applicant made a valid point when it argued, with reference to the Similarity Tool for the comparison of goods and services, that wine and gin are similar. However, the EUIPO emphasized that wine and gin are no longer considered similar by the Similarity Tool as of the date of the decision. Indeed, the Similarity Tool now indicates that wine and gin are dissimilar.

Goods assessment in progress

After unequivocally stating that “the Cancellation Division is to follow the outcome in the Similarity Tool on the comparison of goods and services,” the EUIPO concluded that there is no likelihood of confusion and therefore rejected the application for a declaration of invalidity.

The lessons from this decision are thus twofold: on the one hand, examiners must follow the Similarity Tool; on the other, the output of the Similarity Tool must be considered as of the date of the decision.

The purpose of this analysis is not to debate the merits of the decision that wine and gin are dissimilar. The EUIPO’s argument that “wines and gin and gin-like spirits are different as regards their ingredients, methods of production, colours, tastes and the manner in which they are consumed” is entirely understandable. The central point of contention here is the authority argument presented by the office, which asserts that because the Similarity Tool indicates wine and gin are dissimilar, they must be regarded as such. Does this decision imply that the Similarity Tool carries binding legal authority?

This quasi-normative significance attributed to this machine is all the more surprising given that the EUIPO website states unequivocally that “the comparisons in the tool are NOT LEGALLY BINDING upon any entity” (especially since the phrase ‘not legally binding’ appears in capital letters on the EUIPO website). Is there not a glaring contradiction between this statement on the EUIPO site and the assertion in the decision that the Similarity Tool “must be followed by examiners”?

This contradiction is all the more surprising given that this decision is not an isolated one. Indeed, in recent weeks and months, decisions endorsing the Similarity Tool as a panacea have proliferated. On May 14, 2024, the Opposition Division concluded that “even if the decision referred to by the opponent found some degree of similarity between services of the same nature as the services in the present case, the Opposition Division must strictly follow the Similarity Tool for the comparison of goods and services” (Case No. 003196752). In the same vein, more recently, on July 2, 2024, the Opposition Division claimed that “According to the Similarity Tool, which the Office is bound by, it clearly appears that shower curtains are dissimilar to the opponent’s goods in Classes 20 and 24” (Case No. 003202533). Furthermore, the quasi-normative significance of the Similarity Tool has even been affirmed by the EUIPO in its Guidelines, which assert that “the Similarity Tool must be followed by examiners.”

Once it is noted that this represents a genuine underlying trend, one must ask what objectives the EUIPO is pursuing. The Guidelines indicate that this tool “serves to harmonise practice on the assessment of similarity of goods and services and to guarantee the coherence of decisions.” Although the greater predictability of the Office’s decisions is undoubtedly a positive development, should we be content with the price that comes with it? Can we truly embrace a legal system where lawyers’ arguments do not influence the outcomes of cases?

In the end, the Similarity Tool is like wine and gin: it should be consumed in moderation.