Ferrero fails to invalidate TIMI KINDERJOGHURT

European Union
In Ferrero SpA v Office for Harmonization in the Internal Market (OHIM) (Case T-140/08, October 14 2009), the Court of First Instance (CFI) has upheld a decision of the Second Board of Appeal of OHIM in which the latter had dismissed an application for a declaration of invalidity of the trademark TIMI KINDERJOGHURT.

The TIMI KINDERJOGHURT mark, which is owned by Tirol Milch reg.Gen.mbH Innsbruck (Austria), was registered for yogurt and other yogurt products in Class 29 of the Nice Classification. Famous Italian confectionery manufacturer Ferrero SpA applied for a declaration of invalidity of the mark based on:
  • the Italian word mark KINDER for foodstuffs in Class 30; and
  • 35 national and international marks containing the word 'kinder'.
Importantly, Ferrero had unsuccessfully opposed the registration of TIMI KINDERJOGHURT based on its Italian registration for KINDER under Articles 8(1)(b) and 8(5) of the Community Trademark Regulation (40/94) (now Regulation 207/2009).
 
Ferrero applied for a declaration of invalidity of the TIMI KINDERJOGHURT mark based on the same legal grounds. The Cancellation Division of OHIM found that the mark was invalid under Article 8(5) of the regulation. The Second Board of Appeal of OHIM annulled the decision, holding as follows:
  • Although decisions in opposition proceedings do not have the force of res judicata, the Cancellation Division remained bound by the substantive findings of the earlier decisions of OHIM, as the administration is bound by its own acts - particularly if those acts have enabled parties legitimately to acquire rights to a registered trademark.
  • The Opposition Division and the Board of Appeal were correct in finding in the opposition proceedings that the marks were visually and phonetically dissimilar, which meant that a precondition for the application of Articles 8(1)(b) and 8(5) had not been met.
Ferrero appealed to the CFI, arguing that the rejection of an opposition cannot give rise to any legal certainty on the part of the trademark owner, since the legislation provides the opportunity to challenge the registration subsequently. Further, it claimed that the principle of res judicata did not apply, as new facts and additional evidence - especially those concerning the reputation of the KINDER mark and the family of KINDER marks - had been submitted before the Cancellation Division. Ferrero also argued that the reputation of its earlier marks had not been taken into account by the Board of Appeal in assessing the similarity of the marks. Finally, it submitted that the board had erred in finding that 'timi' was the dominant element of the TIMI KINDERJOGHURT mark.
 
The CFI dismissed Ferrero’s action in its entirety. The CFI first stated that the board had erred in concluding that findings made in a final decision in opposition proceedings are binding in subsequent invalidity proceedings. Therefore, it had wrongly applied the principle of res judicata.
 
Nevertheless, this error did not affect the board's ruling, as the latter had carried out “an independent and comprehensive examination of the substance of the dispute”, in particular with regard to the lack of similarity between the marks. The CFI held that the words 'kinder and 'joghurt' do not appear as independent elements in the TIMI KINDERJOGHURT mark, as the "stylized unevenness of the dancing, undulating font used for the word ‘kinderjoghurt’ turns them into a harmonious unit". Moreover, the word ‘kinderjoghurt’ is only of secondary importance as compared with the element 'timi', which is prominently and centrally placed above ‘kinderjoghurt’. The CFI further found that the word 'kinder' is a negligible element in the overall impression produced by the TIMI KINDERJOGHURT mark. Finally, the CFI pointed out that the reputation of the KINDER mark was incapable of calling into question the lack of similarity between the mark.
 
The CFI thus prevented Ferrero from obtaining a monopoly over trademarks containing the word 'kinder' for foodstuffs without raising the complex issue of the descriptive nature of the KINDER mark, which means 'children' in German (for a German perspective please see "Supreme Court restricts scope of protection of KINDER trademarks").
 
Florian Schwab, Boehmert & Boehmert, Munich

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