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.