No quick exit for QUICKY

In Société des Produits Nestlé v Office for Harmonization in the Internal Market (Case C-193-06 P, September 20 2007), the European Court of Justice (ECJ) has reversed a judgment of the Court of First Instance (CFI) and has upheld the opposition of Quick Restaurants against the registration of the Community trademark QUICKY.

Société des Produits Nestlé applied for the registration of a complex trademark consisting of the verbal element QUICKY and a figurative element (a rabbit). Quick opposed the registration based on its registered trademarks QUICK and QUICKIES.

The CFI ruled that the graphic element was not the dominant element of the trademark applied for and thus did not render the verbal element negligible. The CFI also held that the verbal element of a complex trademark is usually more distinctive than the figurative element. Against this background, the CFI examined only the verbal elements of the trademarks and found that there was a likelihood of confusion. Consequently, it refused the registration of the trademark QUICKY.

Before the ECJ, Nestlé alleged that the CFI had erred in its assessment of the visual similarities between the trademarks. The ECJ agreed with Nestlé. It held that the CFI should have carried out a global assessment of the marks in order to determine the risk of confusion based on the overall impression given by the trademarks, bearing in mind, in particular, their distinctive and dominant components (see SABEL (Case C-251/95) and Shaker (Case C-334/05 P)). Therefore, the CFI had erred in finding that the graphic element did not constitute the dominant element of the trademark.

Consequently, the ECJ found that the CFI had violated Article 8(1)(b) of the Community Trademark Regulation (40/94/EEC). It set aside the judgment and referred the case back to the CFI.

Richard Milchior, Granrut Avocats, Paris