No fudge? General Court deals with warring chocolate cows

Colour marks, in black and white ...  Here's a guest post from Katfriend Valentina Torelli on, among other things, an issue that is increasingly occupying the attention of trade mark practitioners -- the scope of protection accorded to figurative trade marks that have been registered in black-and-white.  Last month guest Kat Darren Meale posted "Red and yellow and pink and green… or just black and white? Important new European Common Practice on black and white trade marks", here, which discussed the Common Communication on the Common Practice of the Scope of Protection of Black and White (“B&W”) Marks issued by the European Trade Mark and Design Network, here. Meanwhile, the courts continue to go about their daily tasks, as Valentina explains ...

A few weeks ago, a fascinating case (Case T-623/11, Pico Food GmbH v OHIM, Bogumił Sobieraj intervening) came before the General Court, which took the opportunity to ruminate over snack food, mainly sweets, cows --  and the coverage and scope of protection of black and white marks.

A Polish entrepreneur, Bogumil Sobieraj, filed a Community trade mark (CTM) application for the figurative mark illustrated on the right. Protection was sought for goods in Class 30 of the Nice Agreement, including 'chocolate-covered and glazed fruit, chocolate-covered raisins, chocolate-covered and glazed hazelnuts, chocolate-covered and glazed peanuts, fruit jellies, candy for food, pastry and confectionery, in particular candy for food, caramels (candy), pralines, chocolate, chocolates, chocolate-glazed confectionery, chocolate bars, wafers, pastry, chocolate-glazed pastry'.

Pico, a German company, challenged this application without any success both before the Opposition Division and the Board of Appeal, on the basis of a trilogy of German trade marks, among which the most relevant are the three depicted below.

Pico mark 1

Pico mark 2

Those earlier marks were also registered for Class 30. Pico restricted its opposition to 'chocolate bars, chocolate products; sweets, drops, toffees, in particular made by using milk, cream and/or butter'. Said Pico, the first and second of those earlier rights had acquired enhanced distinctiveness among the relevant public, namely average German consumers. Despite the identity of the goods at issue and the reputation of the earlier rights, the Second Board of Appeal ruled against the applicant, highlighting that the differences between the signs were sufficient to exclude any likelihood of confusion.

Pico mark 3

Pico's appeal to the General Court was based on two pleas in law. The first concerned infringement of Article 76(1) of Regulation 207/2009 on the Community Trade Mark, which reads

'In proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought'.

In a nutshell, the Court stated that the Board of Appeal had correctly carried out its examination according to Article 76(1). In fact, on the basis of Sobieraj’s evidence, the Board accepted that, in the EU (Germany included), consumers are quite accustomed to encounter designs featuring a cow in connection with the goods at issue. Indeed, OHIM noted, more than thirty marks bearing the representation of a cow have been registered for goods in Class 30.  The Court added that Pico itself had recognized that Sobieraj’s application implied the weak distinctive character of such representations.

The second plea was based on the misapplication of Article 8(1) of Regulation 207/2009, in that the Board of Appeal dismissed any likelihood of confusion even though it did not find that the signs were different overall. The parties agreed with the Board that the goods at issue were identical. However, contrary to Pico’s contention, a level of attention far below that of the average consumer could not be ascribed to the relevant public (this being composed of average consumers, reasonably well informed and reasonably observant and circumspect). The Court analysed the visual similarities between the signs, which was of greater importance according to Pico’s submission, justifying its conclusion that the marks lacked similarity by reference to its case-law on black and white marks and on the (ir)relevance of the figurative element representing a cow in all the marks.

The Court applied its approach to the coverage and the scope of protection of trade marks registered in black and white, following the ruling of the Court of Justice of the European Union (CJEU) last summer in Spacsavers (Case C-252/12, noted on this weblog here). On this basis it rejected Pico’s argument that

'the registration of a mark which does not designate any specific colour covers ‘all colour combinations which are enclosed within the graphic representation’'.

Here's one colourful cow that often gets litigated:
she's registered in colour and in black-and-white

If that were the case, Pico could claim protection for any colour combinations, including the yellow and white combination, for vertical stripes just by registering the striped trade mark in black and white (paragraph 37). The Court removed any doubt that the colour in which a trade mark is registered, or the lack of designation of any specific colour, can be perceived by consumers as negligible elements: any comparison between the signs has to be run according to how they were registered or appeared in the application for registration (paragraph 38).

The position is different where a trade mark that is not registered in a specific colour, (i.e. just in black and white) is used by its proprietor in a colour or in a combination of colours: this is still genuine use – a proposition that is even more true when the colour or combination of colours which the trade mark owner uses is that which the relevant public associates with the mark as registered by virtue of that use (paragraph 39). This is what the General Court concluded, referring to Case T-418/07 LIBRO v OHIM – Causley (LiBRO), and confirming the approach adopted in Specsavers.

The Court added that, although cows can vary a bit -- as do the cows on the marks in this case --  consumers in the EU will still remember the representation of a specific cow. What saved the zoological diversity of these bothersome bovines in this case was the allusive character of the cow representations in connection with the goods in Class 30 for which the trade mark in dispute were registered. It was undeniable that the goods covered by all the marks were products made using milk or milk products: chocolate bars, chocolate products, sweets, drops and toffees. From this the Court concluded that the cow figurative elements had a distinctive character, albeit a weak one.

Milanówek: no cows,
no confectionery ... 

Finally, the Court upheld the Board of Appeal's findings that the marks had no phonetic or conceptual similarity. As to phonetic similarity, whether because different words were included in the parties' marks or whether no word elements were present at all in one of Pico’s marks, the public would pronounce them differently. Likewise, the conceptual similarity did not exist, again on the basis of one of the CTM application's word elements -- the name of the Polish city Milanówek. This word, reproduced twice on the applied-for mark, would induce the consumer to think of that city, if they knew of it, or to consider it an invented term. The Court completely rejected Pico’s submission that the first earlier mark could not be compared phonetically or conceptually with the CTM application, because the former did not contain any word elements: even if the two types of comparison could not have been possible, that was no basis for concluding that the marks were phonetically similar and that, in Pico’s first mark, the cow could not imply a conceptual meaning.

Does chocolate milk come from brown cows? Here
Make your own chocolate cow here