Minimal confusion found in MINIMAL Case
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The Supreme Court has issued its decision in Trademarks Board of Appeal v Société des Produits Nestlé SA (Case 103/82008, December 17 2008).
Since 2002 Société des Produits Nestlé SA (previously Novartis Medical Nutrition (Swede) AB) has been selling nutritional drinks in Denmark under the trademark MINIMAX, which is displayed on the container as ‘MiniMax’. In 2002 MINIMAX was registered as a word mark in Classes 5, 29, 30 and 32 of the Nice Classification.
In 2004 Danish company Kims A/S applied for the registration of the device mark MINIMAL for goods in Classes 29, 30 and 31. Kims used the trademark on packaging for potato chips.
In 2005 Nestlé objected to the final registration of the MINIMAL mark, claiming that it was confusingly similar to MINIMAX.
The Trademarks Office and the Trademarks Board of Appeal found that the trademarks were not confusingly similar and considered the word ‘minimal’ to be at the free disposal of other parties.
Nestlé filed suit against Kims before the Maritime and Commercial Court, which concluded that the Trademarks Board of Appeal should delete the trademark MINIMAL from the Trademarks Register.
On appeal, the Supreme Court held that according to an overall evaluation, there was no risk of confusion between the two marks. The Supreme Court found that even though the words themselves differed only in their last letter, there was a significant difference between the two marks due to the fact that:
- MINIMAX was a word mark which would normally be written with two capital ‘M’ letters (MiniMax); and
- MINIMAL was a device mark where the entire word was written in small letters in a particular high font on a rectangular background.
In addition, the court considered the ‘mini’ component to be the weaker part of the trademarks and maintained that the average consumer would pay most attention to the last syllable - namely, 'max' or 'mal'. Further, the court found that there was a significant phonetic difference between the marks, as the ‘a’ in MINIMAX was pronounced as a short ‘a’ without glottal stop, whereas the ‘a’ in MINIMAL was pronounced as a long ‘a’ with glottal stop. Moreover, the two words differed significantly from each other in relation to their meaning, since ‘minimal’ is a well-known word meaning ‘least possible’. However, the Supreme Court remarked that registration of the device mark MINIMAL did not grant an exclusive right to the word ‘minimal’.
Mads Marstrand-Jorgensen, Norsker & Co, Copenhagen
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