Similar colour combination insufficient to create confusion

The Board of Appeal has issued its decision in an opposition filed by Swiss company Société des Produits Nestlé in 2006 against Russian closed joint-stock company DHV-S (Case 1000-o, August 10 2011).
Nestlé is the owner of the well-known device mark MAGGI and of the device itself, which are used to designate several culinary products:
DHV-S was using, and applied for the registration of, the ROLLTON device mark, which includes the same colours as the MAGGI device, for culinary products:
Nestlé opposed, claiming that the colour combination of yellow and red, with yellow being the dominant colour, as well as the bubble-like device, could create a likelihood of confusion. Nestlé did not claim dilution. As a defence, DHV-S relied mainly on the fact that the verbal elements were different.
The Board of Appeal found that the similar colour combination did not outweigh the differences between the word elements and, therefore, that there was no likelihood of confusion between the marks. The Board of Appeal reasoned as follows:
  • The verbal elements were the dominant features of the marks and were undoubtedly different;
  • The verbal elements dominated the overall impression of the marks in such a way that the marks could be distinguished based on the verbal elements only;
  • The colour combination of yellow and red is not unique and is commonly used in the food sector;
  • The fact that both marks are used for food products which are displayed side by side at the same points of sale will help consumers to distinguish between the products; and
  • With regard to Nestlé’s device mark, confusion was unlikely due to the fact that the colour combination of yellow and red is commonly used in the food sector.
The board concluded that the differences between the verbal elements outweighed the similar colour combination and, therefore, there was no likelihood of confusion between the marks.
Surprisingly, Nestlé did not claim that the MAGGI device mark was well known in Estonia; nor did it raise a claim of dilution, which would have been more appropriate in this case.
Almar Sehver, AAA Legal Services, Tallinn

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