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

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
Being cruel to be KINDER: ECJ says "yes" to TiMi Being cruel to be KINDER: ECJ says "yes" to TiMi Reviewed by Jeremy on Thursday, March 24, 2011 Rating: 5


Anonymous said...

Curiously, it would seem that the CTM proprietor requested the surrender of his CTM on 15/02/2010 which the OHIM registered on 15/03/2010, but nobody thought to tell the ECJ...

Anonymous said...

Just found the relevant part of the judgement re. the surrender. Sorry, should have read all before posting a comment.

Vanessa Marsland said...

Why (to the extent UK criminal law applies) is it not fraud by false representation under the Fraud Act 2006? See

2Fraud by false representationE+W+N.I.
(1)A person is in breach of this section if he—
(a)dishonestly makes a false representation, and
(b)intends, by making the representation—
(i)to make a gain for himself or another, or
(ii)to cause loss to another or to expose another to a risk of loss.
(2)A representation is false if—
(a)it is untrue or misleading, and
(b)the person making it knows that it is, or might be, untrue or misleading.
(3)“Representation” means any representation as to fact or law, including a representation as to the state of mind of—
(a)the person making the representation, or
(b)any other person.
(4)A representation may be express or implied.
(5)For the purposes of this section a representation may be regarded as made if it (or anything implying it) is submitted in any form to any system or device designed to receive, convey or respond to communications (with or without human intervention).

Can't the IPO get the police to follow up these cases where there seems to be some UK nexus?

Next target - private parking enforcement companies who send out demand letters made to look like official penalty notices.

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