CONFUSE A COW

The IPKat brings you news of another CFI Community trade mark judgment. Pedro Díaz v OHIM was decided on Tuesday. Díaz applied to register CASTILLO for, inter alia, dairy products. However, Granjas Castelló, the proprietor of an earlier Spanish mark, EL CASTILLO for condensed milk, opposed the application. In this case, Díaz appealed against the Board of Appeal’s refusal to register its mark for cheese under Article 8(1)(b), finding that there was a likelihood of confusion because of the similarity of the goods and the marks. The CFI dismissed the appeal. Although the marks were pretty clearly similar, the court wasn’t too impressed with the Board of Appeal’s reasons for finding that cheese and condensed milk were similar. The fact that both condensed milk and cheese could be used as ingredients in cooking did not make them similar because this is true of most other foodstuffs. It was also unlikely that the two could be used as substitutes for people who are lactose-intolerant. However, the CFI found that the two were similar as they belonged to the same “product family” i.e. although the relevant public would know that the way in which the products were manufactured were different, they would be aware of the essential characteristics of the two sets of goods and would conclude that those differences did not prevent them from being made or sold by a single undertaking. Also of interest is the Court’s holding that the fact that the marks were similar and the goods were similar meant that there was “prima facie a likelihood of confusion between the marks”. Finally, the CFI commented on the effect of the existence of other similar marks on the market on the likelihood of there being confusion, finding that confusion would be less likely if one of any co-existing marks had a reputation.

The IPKat notes that even in a relatively routine Article 8(1)(b) case such as this, the CFI has introduced a couple of new principles. There is still scope for further guidance on the circumstances in which confusion will be found. Such guidance will come to light as new fact-patterns are presented before the EU courts. He observes that the CFI has adopted a Continental approach in its willingness to find confusion, prima facie at least, as a matter of law, rather than fact, following automatically from the fact of the similarity of the marks and the similarity of the goods.

Milk mad? Click here and here
Despise dairy? Click here and here
Recipes with condensed milk and cheese here , here and here