No res judicata, but that's where the similarity ends

The Court of First Instance roared into action today when it dismissed the appeal of choco-champs Ferrero against OHIM's refusal to uphold their opposition to the registration as a Community trade mark of the sign depicted above in Case T‑140/08, Ferrero SpA v Office for Harmonisation in the Internal Market, Tirol Milch reg.Gen.mbH Innsbruck. Tirol Milch sought to register it in respect of ‘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' in Class 29.

Ferrero opposed, citing its earlier Italian word mark KINDER for a large number of edibles (Class 30) and alleging both a likelihood of confusion and, somewhat hopefully, unspecified grievances under Article 8(5) of Regulation 207/2009. Neither the Opposition Division nor the Board of Appeal found much to commend the opposition, so the application was granted.

Never daunted by the prospect of a challenge, Ferrero then applied for cancellation of the same mark on the same grounds. Perhaps surprisingly, given the history of this case, the Cancellation Division upheld the application under Art. 8(5) and declared the mark invalid. The Board of Appeal reversed this decision, adding:

"... although decisions in opposition proceedings do not in law have the force of res judicata, the Cancellation Division remained bound by the substantive findings and conclusions of the earlier decisions of OHIM by virtue of the principle nemo potest venire contra factum proprium, which means that the administration is bound by its own acts, particularly when those acts have enabled parties to the proceedings legitimately to acquire rights to a registered trade mark.

... the marks were, overall, dissimilar, taking account of the fact that, visually and phonetically, the marks are substantially dissimilar.

... a condition for the application of Article 8(1)(b) and of Article 8(5) of
Regulation No 40/94, namely that the signs be identical or similar, was not

Ferrero appealed to the Court of First Instance, which dismissed [the appeal and] upheld the Board's decision. The Board was wrong on the res judicata point:
"... the Board of Appeal was wrong to hold ... that, in invalidity proceedings, the departments of OHIM were bound by findings made in a final decision handed down in opposition proceedings, according to the rule nemo potest venire contra factum proprium, the protection of acquired rights, and the principles of legal certainty and the protection of legitimate expectations. First, since no force of res judicata attaches to a decision, even when final, handed down in opposition proceedings, that decision is incapable of creating either acquired rights or a legitimate expectation as to the result of a subsequent action for a declaration of invalidity. Second, if the arguments of the Board of Appeal on that point were accepted, any action for a declaration of invalidity challenging the registration of a Community trade mark on which a decision had been made in opposition proceedings would, where the parties to the dispute were the same, the subject matter was the same and the grounds were the same, be deprived of any practical effect, although such a challenge is permitted ...".
However, the marks weren't exactly what one might call similar:
"56 First, the word ‘kinder’ is merged with the word ‘joghurt’, which means that they have no specific, independent existence. Not only do the words ‘kinder’ and ‘joghurt’ have the same visual significance, but the stylised unevenness of the dancing, undulating font used for the word ‘kinderjoghurt’ turns them into a harmonious unit in which the two constituent words have become barely perceptible. Those special features show that, contrary to what is claimed by the applicant, the word ‘kinder’ is not merely attached to the word ‘joghurt’. Moreover, because of the stylised font used for the word ‘kinder’ in the challenged mark, that mark is not visually similar to the earlier word mark on which the invalidity action is based, for which a standard font is used.

57 Secondly, it is clear that the word ‘kinder’ in the challenged mark is merely part of the word ‘kinderjoghurt’, which is of only secondary importance as compared with the word ‘timi’. In that regard, the Court must reject the applicant’s arguments which seek to show that the word ‘timi’ is not the dominant element because of its smallness and because it is allegedly less legible than the word ‘kinderjoghurt’. Visually, ‘timi’ is the focus point of the sign since it is prominently and centrally placed above the word ‘kinderjoghurt’, and accordingly attention is drawn first to it. The central positioning largely offsets the fact that the word ‘timi’ is printed in a font of smaller size than that used for the word ‘kinderjoghurt’ and the fact that the printing in white on a dark background might possibly make the word ‘timi’ less legible than the word ‘kinderjoghurt’ placed in the lower part of the sign. Moreover, aurally, it is clear that ‘timi’ is the first word to be pronounced, with the result that consumers attach most importance to it. The word ‘kinder’ is therefore overshadowed by the dominant element ‘timi’, which is undoubtedly what consumers find striking.

58 Thirdly, unlike its position in the earlier word mark on which the invalidity action is based, the word ‘kinder’ is found in the challenged mark between two other words namely ‘timi’ and ‘joghurt’. Such a difference substantially weakens not only any aural similarity between the two signs because of the shared element, but also any visual similarity as a result of that common element. Accordingly, the word ‘kinder’ is a negligible element in the overall impression produced by the mark at issue".
The IPKat thinks the CFI has got it right on both counts but suspects that Ferrero, aided by its wily team of legal advisors, will be straining at the seams to take this one further if it can.
No res judicata, but that's where the similarity ends No res judicata, but that's where the similarity ends Reviewed by Jeremy on Wednesday, October 14, 2009 Rating: 5


  1. In the Netherlands, we have KinderCola. A cola without any of the characterizing ingredients of the better known colas. No caffeine, less sugar, less bubbles

  2. "Ferrero appealed to the Court of First Instance, which dismissed (the appeal and?) upheld the Board's decision"


  3. Ferrero appealed to the Court of First Instance, which dismissed upheld the Board's decision

    dismissed or upheld, or both??!!

  4. I was hoping that the CFI would focus on the fact that the word KINDER is of very low distinctiveness and should have never been registered, instead of spending so much thoughts on how the word is positioned amongst other elements of the mark. KINDER means ‘children’ and you cannot be allowed to monopolize such a term for products which are mainly made for children und mainly sold in German speaking countries.


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