From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Tuesday, 2 June 2015

Opposition is golden as Kraft's ORO marks do their job

In Cases T-218/13 and T-271/13, involving the ORO Italian and Community trade marks, the General Court of the European Union assessed the likelihood of confusion under Article 8(1)(b) of Regulation 207/2009, considering the EU's different language regimes in its comparison of the signs.

Both cases involved Kraft Foods Italia's oppositions to applications by Nutrexpa to register figurative Community trade marks including the words 'Cuétara MARIA ORO', represented here. Kraft relied on several Italian and Community figurative marks for 'ORO'. The opposing marks covered either identical or similar goods in classes 29 and 30.

Both the Opposition Division and the Board of Appeal upheld Kraft's claims of likelihood of confusion, since all factors relevant to that end were present in both oppositions, giving due importance to the distinctive character of the earlier rights in the whole EU and the similarity of the signs at issue. On appeal the General Court joined the cases but still gave separate judgments, affirming the decisions of the Board of Appeal.

IT TM no. 968 294
Nutrexpa grounded its appeals on three main arguments: first, that the distinctive character of the earlier marks was low; secondly, that the signs were different; thirdly, that there was no likelihood of confusion.

CTM no. 6 022 677
The assessment on the distinctiveness of the earlier rights involved the meaning and the understanding of the term 'ORO' ('gold', both in Italian and in Spanish), being shared by the respective marks. The General Court agreed with the Board of Appeal that only Italian and Spanish consumers could understand the word ORO as a connotation of superior quality for the products identified with the marks. 

Golden ears ...
No presumption of the understanding of the term ORO was found in respect of other EU consumers, such as the Portuguese or French, in whose language the word 'oro' has a similar etymological form ('OURO' in Portuguese, 'OR' in French). Thus only for Italian and Spanish consumers was the earlier marks' distinctiveness was low --which was not the case for consumers elsewhere in the EU [this Kat may not be an Italian average consumer, but she is quite sure that the term ORO is also indicative of ears of corn from which ORO products are made].

... but the Kat escaped!
The General Court affirmed that the ORO marks could not be said to be scarcely distinctive, and Case T-344/03 Saiwa v OHIM-Barilla Alimentare (SELEZIONE ORO BARILLA could not be said to have established a precedent. Not only was the ORO mark in the earlier case different from those here, but in that case the Court did not rule on the distinctive character of term ORO: Saiwa simply did not provide evidence that its word marks, comprising the term ORO, were inherently distinctive in Member States other than Italy.

The General Court then found that the signs at issue were visually and phonetically similar.

From the visual perspective, all the marks included the word ORO in upper case letters, with three-dimensional stylizations which did not greatly differ. The fact that Nutrexpa's  mark also comprised the terms 'cuétara' and 'maria' was irrelevant, given the dominance of the term ORO. Moreover, all EU consumers bar the Italians and the Spaniards, while not understanding the term ORO, would pronounce all three word elements of Nutrexpa's mark so that the signs at stake were also phonetically similar to certain extent. Italians and Spaniards might also identify Nutrexpa's mark by its ORO component.

As for the assessment of the signs' conceptual similarity, the General Court held that only Italian and Spanish consumers would understand the meaning of the ORO component, as the practice of the food industry as defining the superior, "golden" quality of the products distinguished by a certain mark. For other EU consumers it could not be presumed that a term in a foreign language could be understood and given the right meaning in that language.

The likelihood of confusion between the marks involved in both cases was therefore affirmed on the basis of the visual and phonetic similarity of the signs and the identity or similarity of the goods concerned. Indeed, the distinctive character of the earlier marks was only one of the factors to be taken into account in the global assessment of the likelihood of confusion.

1 comment:

Anonymous said...

That argument that Portuguese people would not identify the Spanish word "ORO" with "OURO" is like saying that Americans would not indentify "colour" with "color" and viceversa.

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