ILKA FITT for water confusingly similar to MILKA for chocolate


The Metropolitan Court has rejected an application for the registration of the trademark ILKA FITT for mineral and aerated waters on the grounds that there was a likelihood of confusion with the well-known trademark MILKA for chocolate (Case 3.PK.21.230/2008/5, November 10 2008).

On May 22 2006 Ilka és Társa (Hungary) applied for the registration of the device mark ILKA FITT for mineral and aerated waters. On April 27 2007 Kraft Foods Schweiz Holding AG opposed the application on the grounds that ILKA FITT was confusingly similar to its registered trademark MILKA. The opposition was based on Section 4(1)(b) of the Trademark Law, which reads as follows:
"The following may not be granted trademark protection:

(b) a sign which, due to its identity with or similarity to an earlier trademark or the identity or similarity of the goods or services covered, may be confused with the earlier trademark.
In support of its opposition, Kraft argued that its trademark is well known in Hungary. Moreover, it alleged that the blue background of the ILKA mark would remind consumers of the well-known lilac colour of the Milka product, which also enjoys trademark protection. Therefore, consumers would be misled into thinking that the ILKA mark was associated with Kraft. Finally, Kraft claimed that there was almost no difference in the pronunciation of the words 'ilka' and 'milka'. 
In its defence, Ilka submitted that its mark consisted of two words, 'ilka' and 'fitt', 'ilka' being a surname. Moreover, the blue background of the ILKA mark could easily be differentiated from the lilac colour of the Milka product. Ilka did not dispute the fact that the MILKA mark had a strong distinctive character due to its extensive use in the European Union. However, Ilka argued that the well-known status of the MILKA mark would reduce the likelihood of confusion among consumers. 
The Hungarian Patent Office (HPO) rejected the application, holding that the marks were similar from a visual, phonetic and conceptual point of view. Ilka appealed to the Metropolitan Court.
The court held that Ilka was wrong in thinking that the reputation of the MILKA mark would prevent confusion between the marks. The court referred to the decision of the European Court of Justice in Davidoff (Case C-292/00), in which it was held that trademarks with a reputation are entitled to special protection.    
In addition, the court disagreed with Ilka's argument that consumers would not confuse the blue background of the ILKA mark with the lilac background of the MILKA mark. The court highlighted the fact that blue and lilac are located next to each other in the colour spectrum, and that the colour lilac is obtained by mixing blue and red. Therefore, consumers might easily confuse the two colours at first sight. In addition, the court held that the specific shade of the colour applied for depended to a great extent on the technology used to print the packaging of the goods. It was possible that the colour blue and lilac would look almost identical on the packaging of the goods. 
The court also concluded that the word elements of the marks were confusingly similar.
The court then considered whether the goods covered by the marks were similar. First, the court recognized that the average consumer would not confuse chocolate with mineral water because of the obvious differences between them. However, there was a definite link between these goods, which was supported by the fact that some of Kraft's trademarks covered both types of goods.
The court recalled that under Section 18 of the Trademark Law, the owner of a registered trademark is entitled to extend protection of the mark to goods and services in all classes. Therefore, the owner of a mark with a reputation may oppose the registration of a confusingly similar mark, even if the mark applied for covers different goods and/or services. In the present case, consumers might thus be confused into thinking that the owner of the MILKA mark had launched a new product.
Consequently, the court rejected the application for the registration of ILKA FITT. The decision may be appealed and is thus not final.
Gabriella Sasvári, SBG & K Patent and Law Office, Budapest 

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