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Friday, 21 September 2007

Kinder capers

The IPKat's good friend Birgit Clark has sent him news from Germany of an important and somewhat controversial decision, summarised in a press release from the Federal Supreme Court (Bundesgrichtshof/BGH), the First Senate of which is responsible for trade mark cases. In two recent decisions that court had to determine the extent of trade mark protection for the Kinder trade mark for products made of chocolate. According to the press release,

"The claimant, the sweets producer Ferrero, is the proprietor of several registered ("graphically designed") device marks, some of them colour marks, which all contain the word element "Kinder" ("children") and are protected inter alia for chocolate. The first case was about an injunctive relief with which Ferrero tried to prevent the sweets producer Haribo to offer (inter alia) confectionery, bakery and pastry products under the trade mark "Kinder Kram" (literally "kid's/children's stuff")

The Higher Appellate Court of Cologne (Oberlandesgericht Köln) did not see a violation of the trade mark rights of Ferrero after the Bundesgerichtshof had already overruled an earlier decision of the Cologne court in 2003, which had seen the case differently (and had considered the marks similar).

Der Bundesgerichtshof has now confirmed the decision of the Cologne court and dismissed the case. It confirmed that the mark "Kinder Kram" did not violate the rights in the mark "Kinder". According to the Bundesgerichts the claimant could only claim protection for the graphic/device design elements and the colourful composition/design of some of their marks. The word element "Kinder" on its own, however, did not enjoy trade mark protection per se according to the BGH, due to its "descriptive nature" in the eyes of the relevant consumer group. The claimant's device/colour marks "Kinder" and the defendant's word mark "Kinder Kram" are not similar in the eyes of the court.

In the second case, again based on Ferrero's earlier registered trade marks for "Kinder" the defendant was a producer of dairy products who intended to bring out a new milk desert under the mark "Kinderzeit" ("children's time"). Ferrero's intentention was to ban the use of the mark in advertisement and on packaging. While their claim was successful in the lower court, the Higher Appellate Court of Hamburg (Oberlandesgericht Hamburg) dismissed their claim. The Bundesgerichtshof confirmed this ruling and stated that there was no similarity between the design mark "Kinder" and the word mark "Kinderzeit""
Birgit is not so convinced: she observes that "Kinder" has always been a well-known mark for chocolate, especially for children and lovers of chocolate. This being so, members of the relevant German consumer group would always see the element "Kinder" as the relevant and dominant element and think that whatever was offered was a new product of the Kinder range by Ferrero. Next to the word "Kinder" the design elements would not be considered dominant, even though they are quite distinctive.

The IPKat says, this problem always arises with word-and-device marks: the scope of protection will always be limited by the fact that it is the visual image that is registered rather than the word itself, while the word is the normal means by which the consumer refers to the product.

6 comments:

Simon said...

I agree with Birgit. I am not a member of the relevant consumer group (being a UK-based consumer) but even I can remember Kinder from 30 years ago and the dominant element of the mark was definitely "Kinder". I recall the "Kinder - Chocadoobie" slogan that was used (more distinct because it was delivered in a weird voice). And Kinder is certainly well-known by my children (UK-based consumers who have a penchant for Kinder eggs wherever they are in Europe).

Anonymous said...

Well, fact is that "Kinder" means "children" in German. No one should monopolize this in a German speaking country.

The figurative mark (!) is well known, not the word "Kinder" as such.

The truth lies here probably in the middle. Other undertakings probably try to profit in one way or the other from the well-known mark.

Anonymous said...

@Anonymous: Being bi-lingual myself, it is not about a monoploy for the word "Kinder" per se but "Kinder" in relation to chocolate. Completely different matter. No, it is not the get up or design that is the relevant bit of the mark, it is the mark "Kinder" in relation to chocolate. Especially when used as the dominant bit. If something new was brought on to the market, even if it did look different but was related to sweets, my first thought would be "related to Kinderschokolade", maybe they are trying a new get up for a different market or revamping the packaging. It would at least confusse me. So, I agree about the word "Kinder" per se but disagree with your assessment of the "Kinder" in relation to chocolate or sweets (goods).

Anonymous said...

It may be correct that "children"/"kinder" is not descriptive for chocolate (Birgit). However this does not change the fact that is purely descriptive for the relevant consumer group of chocolate. It's the latter reason why the BGH said that the word "kinder" does not deserve any protection.

Anonymous said...

"....purely descriptive for the relevant consumer group of chocolate" -

I guess you could argue acquired distinctiveness ("secondary meaning") of the dominant element "Kinder" for chocolate products after 30 odd years in the relevant market? That is not the same as a monopoly for the word "Kinder"..?

Anonymous said...

Unless I am very much mistaken, the heavy TV advertising by Ferrero delivered year after year the message ("chocolate with an extra portion of milk") that its KINDER chocolate is specially formulated to be healthier for children. The problem with that line in advertising is that it builds in the mind of the average consumer he idea that there is a special category of chocolate that you might aptly name "Childrens' chocolate".

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