Ferrero blocks registration of FERRO mark
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In Ferrero Deutschland GmbH v Office for Harmonization in the Internal Market (OHIM) (Case C-108/07, April 17 2008), the European Court of Justice (ECJ) has held that there was a likelihood of confusion between the trademarks FERRERO for pastry products and FERRO for salted biscuits.
Cornu SA Fontain applied for the registration of FERRO as a Community trademark for salted biscuits in Class 30 of the Nice Classification. Ferrero Deutschland GmbH opposed the application based on its earlier registered trademark FERRERO for various goods in Classes 5, 29, 30, 32 and 33. The Opposition Division of OHIM rejected the opposition and the Board of Appeal of OHIM affirmed. Ferrero appealed to the Court of First Instance (CFI).
The CFI rejected the appeal, holding that although the FERRERO mark possessed a certain degree of distinctiveness, there was no risk of confusion on the part of the public due to the low degree of similarity between the marks and the products at issue.
On appeal, the ECJ considered that the CFI had committed an error in law in evaluating the evidence provided by Ferrero in order to demonstrate the distinctive character of the FERRERO mark. The ECJ pointed out that the distinctive character of the earlier mark had to be taken into account in order to determine whether there was a risk of confusion among consumers. However, the ECJ found that the CFI had erred in examining the various documents provided as evidence independently, rather than as a whole.
Pursuant to Article 61 of the Statute of the Court of Justice, the ECJ may, in case of annulment of a CFI decision, render a final decision on the matter.
Using this prerogative, the ECJ reversed the decision of the CFI. It held that pursuant to an overall assessment of the risk of confusion, the low degree of similarity between the goods was compensated by the similarity between the marks and the distinctive character of the FERRERO mark in Germany. The ECJ concluded that consumers might be misled into believing that products such as Giotto, Raffaello and Mon Chéri (which are sold under the FERRERO mark) and salted biscuits sold under the FERRO mark originate from the same company or from economically linked undertakings.
The decision of the ECJ puts an end to an eight-year long dispute between the parties.
Cristina Bercial-Chaumier, Bureau DA Casalonga-Josse, Alicante
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