KINDER marks held to be dissimilar

European Union
In Ferrero SpA v Office for Harmonisation in the Internal Market (OHIM) (Case C-552/09 P, March 24 2011), the Court of Justice of the European Union (ECJ) has upheld a decision of the General Court in which the latter had found that the word mark KINDER and the figurative mark TIMI KINDERJOGHURT were not similar.
Tirol Milch reg.Gen.mbH Innsbruck filed an application for the registration of the following figurative sign as a Community trademark for goods in Class 29 of the Nice classification, namely a variety of “yoghurt products”:
Ferrero SpA filed a notice of opposition based on the earlier word mark KINDER, registered in Italy for goods in Class 30 (among others, coffee, tea, sugar, rice; bread, biscuits, cakes, pastry and confectionery, edible ice creams; spices; cocoa products including chocolate coverings; sugar articles).
Both the Opposition Division and the Fourth Board of Appeal of OHIM rejected the opposition on the basis of Articles 8(1)(b) and (5) of the Community Trademark Regulation (40/94). The TIMI KINDERJOGHURT mark was registered on August 27 2004.
On August 19 2005 Ferrero filed a request for the invalidation of TIMI KINDERJOGHURT under Article 52(1)(a) (now Article 53(1)(a) of the Community Trademark Regulation (207/2009)), in conjunction with Articles 8(1)(b) and (5). The Cancellation Division of OHIM invalidated the mark based on Article 8(5). However, the Second Board of Appeal annulled the decision of the Cancellation Division and dismissed the opposition, finding that the marks were dissimilar. 
Although the Board of Appeal found that the final decision rendered in the prior opposition proceedings did not have the force of res judicata, it nevertheless held that, according to the principle of nemo potest venire contra factum proprium, OHIM was bound by the substantive findings made in those proceedings.

On further appeal by Ferrero, the General Court held that the Board of Appeal had been wrong to apply the principle of nemo potest venire contra factum proprium: the regulation does not support the application of this principle, since any registered mark may be challenged on the grounds set forth by the regulation. However, the General Court concluded that the marks were dissimilar and upheld the board's decision (for further details please see "Ferrero fails to invalidate TIMI KINDERJOGHURT").
Ferrero appealed to the ECJ, alleging infringement of Articles 8(1)(b) and (5). In essence, Ferrero argued that the General Court had erred in finding that the respective signs were dissimilar - and, in particular, that the court had failed sufficiently to consider the reputation of the KINDER mark for the purpose of assessing the similarity of the marks.
Following the appeal, Tirol Milch surrendered the contested mark, which was removed from the register. OHIM thus argued that Ferrero no longer had a legal interest in continuing the proceedings. The ECJ disagreed, pointing out that, while the surrender had a legal effect only from the registration of that surrender, a mark which has been declared invalid will be deemed, in accordance with Article 54(2), not to have had any effects from the outset. Due to these different legal consequences, Ferrero retained a legal interest in bringing the present appeal before the ECJ.
On the merits, the ECJ confirmed the position taken by the General Court - in particular, it agreed that the reputation of an earlier mark may be taken into account only if a certain degree of similarity between the marks has been established. The similarity between the marks must be assessed independently from the alleged reputation.
Turning to the visual, phonetic and conceptual similarities between the marks, the court held that the word 'kinder' was the only common element between the marks, and was only of secondary importance in the TIMI KINDERJOGHURT mark, as the overall appearance of that mark was dominated by the word 'TiMi'.

The ECJ thus dismissed Ferrero’s appeal.

Stephan Schneller, Maiwald Patentanwalts GmbH, Munich 

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