Supreme Court restricts scope of protection of KINDER trademarks

In two decisions, the Supreme Court has held that Haribo's mark KINDER KRAM ('kids' stuff' in German) and Zott's mark KINDERZEIT did not violate Ferrero SpA's rights in the KINDER trademarks for chocolate products.

In the KINDER KRAM Case, Ferrero sought an injunction preventing Haribo from offering confectionery, bakery and pastry products under the trademark KINDER KRAM. Among other things, Ferrero relied on:

• its German colour device mark for chocolate with priority of August 12 1991; and
  
  
• its German black-and-white device mark for chocolate with priority of May 9 1997.

The Cologne Appeal Court ruled in favour of Ferrero, finding that the marks were similar. In 2003 the Supreme Court overruled the decision. Subsequently, the Cologne Appeal Court dismissed Ferrero's claim on the grounds that there was no likelihood of confusion between the marks. The Supreme Court affirmed based on the following reasoning:

• The word 'kinder' as such does not enjoy trademark protection, as it is purely descriptive of the target consumers (children).
  
  
• Ferrero's device mark - which is not inherently distinctive - was registered based on acquired distinctiveness (Paragraph 8(3) of the Trademark Act). Ferrero failed to prove that the word element 'kinder' was entitled to increased protection.
  
  
• The overall impression of Ferrero's colour and black-and-white marks was not dominated by the word element 'kinder', but by the colour combination and graphic element of the marks. Moreover, the mark KINDER KRAM could not be reduced to the word 'kinder'.
  
  
• Ferrero was not entitled to rely on rights in the unregistered trademark acquired by use KINDER (Paragraph 4(2) of the act), as this argument was put forward only before the Supreme Court and was thus time barred.

In the KINDERZEIT Case, Zott intended to launch a new milk dessert under the mark KINDERZEIT. Ferrero sought to prevent Zott from using the mark in advertising and on packaging. The Supreme Court affirmed the decision of the Hamburg Appeal Court finding that there was no similarity between the KINDER marks and the KINDERZEIT mark. The Supreme Court held that the word 'kinder' is descriptive of the target consumers and has no distinctive character as such in the mark KINDERZEIT.

The two decisions represent a significant blow to Ferrero in its attempt to obtain a monopoly on the mark KINDER for confectionery. Ferrero did not exclude the possibility of appealing the decisions to the Constitutional Court. From a purely legal perspective, the rulings of the Supreme Court demonstrate that a (colour) device mark might be distinctive based on its colour combination or graphic element, and not on its word constituent. The courts may have reached a different conclusion in non-German-speaking jurisdictions where the word 'kinder' is not descriptive.

Florian Schwab, Boehmert & Boehmert, Munich