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Being cruel to be KINDER: ECJ says "yes" to TiMi

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

Being very fond of both yoghurt and children, the IPKat has long taken an interest in Case C?552/09 P, Ferrero SpA v Office of Harmonisation in the Etc Etc, Tirol Milch reg.Gen.mbH, Innsbruck another Community trade mark appeal in which sentiment, rather than sense, led the appellant to the Court of Justice of the European Union and into a defeat which not even the best counsel of the Kat's noble friend Charles Gielen could prevent.

In short, Tirol Milch Innsbruck (TiMi) applied to register the figurative mark represented above as a Community trade mark in Class 29 for "yoghurt, fruit yoghurt, yoghurt drinks, yoghurt drinks containing fruit; semi-prepared and ready-to-serve meals based mainly on yoghurt or yoghurt products; yoghurt creams" [i.e. yoghurt and some things you can do to it]. Ferrero opposed, citing its earlier Italian registration of the word KINDER (German for "children") in Class 30 for "coffee, tea, sugar, rice, tapioca, sago, coffee substitutes; bread, biscuits, cakes, pastry and confectionery, edible ice-creams; honey, treacle, yeast and baking powders; salt, mustard; pepper, vinegar, sauces, spices; edible ice; cocoa, cocoa products, namely cocoa paste for cocoa drinks, chocolate paste, coverings, namely chocolate coverings, chocolate, pralines, decorations for Christmas trees made of chocolate, goods made of an edible chocolate case with an alcoholic filling, sugar articles, confectionery, including fine and hard pastry" [in other words, not yoghurt, or indeed anything overtly milky].  Said Ferrero, the similarity of the marks and goods will lead to a likelihood of confusion (Article 8(1)(b) of the CTM Regulation) and, in any event, it's a well-known mark and TIMI's registration takes unfair advantage of, or damages, its reputation or distinctive character without due cause under Article 8(5).

The opposition was dismissed, the mark was registered -- but that was just the beginning of the story. Ferrero then launched cancellation proceedings and, in March 2007, OHIM's Cancellation Division declared TiMi's mark invalid under Article 8(5). The Second Board of Appeal reversed this decision, saying the mark was validly registered. In its view, although decisions in opposition proceedings did not in law have the force of res judicata, the Cancellation Division was bound by the substantive findings and conclusions of the earlier opposition by virtue of the principle nemo potest venire contra factum proprium, in accordance with which "the administration must comply with its own acts, particularly where those acts have enabled parties to the proceedings legitimately to acquire rights in a registered trade mark". In any event, the two marks weren't identical or even similar, so there was no basis on which the opposition or cancellation proceedings could succeed. The General Court agreed, observing that the fact that both marks did indeed contain the word "kinder" did not mean that they were similar, given the many obvious differences between them.

The IPKat examines the evidence

This morning Ferrero's final appeal, to the ECJ itself, was dismissed. However reputed and distinctive the KINDER mark might be, no amount of fame and reputation could make it similar to a mark that wasn't similar to it (taking the distinctiveness and repute of a mark into account is handy for assessing whether there is a likelihood of confusion between marks that are similar, and it's sometimes handy for showing that two marks can't be confused, as in Case C-361/04 P Ruiz-Picasso v OHIM, but can't make two marks similar if they're not).  Even the fact that KINDER was one of a family of 36 marks, each of which contained the word "kinder", wasn't going to help.

Make your own yoghurt here
Make your own children here
Why yoghurt is good for you
Why children are good for you

Full post as published by IPKat on March 24, 2011 (boomark / email).