Three decisions annulled due to failure to assess likelihood of confusion

European Union

In Société des produits Nestlé SA v Office for Harmonization in the Internal Market (OHIM) (Joined Cases T-5/08 to T-7/08, March 25 2010), the General Court has upheld an appeal by Société des produits Nestlé SA to annul three decisions of the Second Board of Appeal of OHIM (Cases R563/2006-2, R568/2006-2 and R1312/2006-2).

The Board of Appeal had rejected Nestlé's appeals of its unsuccessful oppositions to applications made by Master Beverage Industries Pte Ltd for the registration of three Community trademarks. Each of the marks consisted of the words 'Golden Eagle' or 'Golden Eagle Deluxe' appearing with a red mug sitting in a bed of coffee beans. The marks were applied for in relation to goods in Class 30 of the Nice Classification, including coffee.

In its oppositions, Nestlé relied on Articles 8(1)(b) and Article 8(5) of the Community Trademark Regulation (40/94), based on its earlier national and international trademark registrations for goods in Class 30, including coffee. These earlier marks, which were figurative only, also featured a mug sitting on a bed of coffee beans.

Under Article 8(1)(b), upon opposition by the proprietor of an earlier trademark, the mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trademark, and the identity or similarity of the goods or services covered by the marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The Board of Appeal found that the condition of similarity between the marks at issue had not been fulfilled and, accordingly, did not consider the question of likelihood of confusion under Article 8(1)(b).

In its judgment, the General Court stated that the global assessment of the likelihood of confusion under Article 8(1)(b) must be based on the overall impression created by the marks, bearing in mind, in particular, their distinctive and dominant components. The court went on to say that, while the assessment of the similarity between two marks means more than taking just one component of a composite mark and comparing it with another mark, the assessment of the similarity of the marks can be carried out on the basis of the dominant element only if all the other components of the mark are negligible in the overall impression created by the mark (see OHIM v Shaker (Case C-334/05)).

The court agreed with the board that the dominant element in each of the three marks applied for were the words 'golden eagle'. However, the court did not consider that the mug on the bed of coffee beans was entirely negligible in the overall impression created by the marks. Although that element was far less likely to indicate the commercial origin of the goods in question than the word element (and, in the case of one of the marks applied for, the figurative element representing an eagle), it could not be described as entirely negligible. Consequently, the comparison between the signs at issue could not be limited only to the elements of the marks which were of greater importance.

The court then engaged in a comparison of the marks and assessed their similarity globally. Since the element of the marks applied for consisting of the red mug and coffee beans could not be considered as entirely negligible, and in light of the similarity between that element and the earlier marks, the court held that the earlier marks could not be regarded as totally dissimilar. However, the mug and coffee beans element was not very distinctive (in contrast to the word element, which was very distinctive) and, therefore, the visual similarity between the marks was held to be weak.

The court went on to consider questions of phonetic and conceptual similarity between the marks, and found that some conceptual similarity between the marks could not be ruled out.

The court concluded that, since there was similarity, albeit slight, at the visual and conceptual level, the board should have assessed the likelihood of confusion between the marks at issue under Article 8(1)(b). Therefore, Nestlé's plea to have the decision annulled should be accepted. The court declined to deal with Nestlé's claim based on Article 8(5), in light of its findings in relation to Article 8(1)(b). As to Nestlé's additional claim that the court should determine that the applications for registration of the marks applied for should be rejected, the court dismissed this on the basis that the case was not at a stage permitting final judgment because the board had not carried out a global assessment of the likelihood of confusion in each of the contested decisions. OHIM and Master Beverage were ordered to pay Nestlé's costs.

Tamsin Holman, Ashurst LLP, London

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