No evidence that relevant public will associate marks with foreign word
In Kraft Foods Schweiz Holding mbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-357/10, June 20 2012), the General Court has dismissed an appeal against a decision of the Fourth Board of Appeal of OHIM finding that there was no likelihood of confusion between the figurative mark CORONA, shown below, and the earlier Estonian, Latvian and Lithuanian marks KARUNA and KARŪNA.
All of the marks at issue covered "chocolates" in Class 30 of the Nice Classification.
In support of its claim, opponent Kraft argued that nationals of the Baltic States, who are familiar with the Russian language, would associate CORONA with the term 'корона' (its equivalent in the Latin alphabet being 'Korona'). To establish that Estonian, Latvian and Lithuanian consumers have good knowledge of the Russian language, Kraft produced a number of documents for the first time before the court, which were declared admissible insofar as they intended to establish a matter of common knowledge.
The General Court agreed with the Fourth Board of Appeal’s assessment of the similarity between the marks, finding that they had a low degree of aural similarity, and created a different visual impression overall (taking into account, in particular, the contested mark’s figurative elements). Considering that chocolate is not normally ordered verbally, but simply selected from shop shelves by consumers, the court found that the visual aspect of the marks was particularly relevant for the assessment of a likelihood of confusion.
In addition, the court found that no conceptual comparison was possible between the marks, as the term 'corona' had no meaning in Estonian, Latvian or Lithuanian. Regardless of the fact that both KARUNA (or KARŪNA) and CORONA mean 'crown', and even conceding that the relevant public would know that the Russian word for 'crown' is the aurally identical 'корона', the court concluded that this was not sufficient to determine that the relevant public would associate the terms ‘karuna’ or ‘karūna’ with the word ‘corona’.
Although Kraft provided evidence showing that its chocolates had been marketed for many years accompanied by the graphic representation of a crown, the earlier marks relied upon in the proceedings did not contain any figurative elements. Therefore, the court could not compare the mark applied for and additional marks owned by Kraft which formed no part of the basis for the opposition proceedings.
The court ruled that the overall differences between the marks, which were sufficient to exclude the existence of a likelihood of confusion, also excluded the need to examine whether use of the mark applied for could take unfair advantage of the reputation of Kraft’s earlier marks. The action was thus dismissed in its entirety.
Joao Miranda de Sousa, Garrigues, Madrid
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