In Ferrero SpA v Office of Harmonisation in the Internal Market, Tirol Milch reg.Gen.mbH, Innsbruck,  C- 552/09, the Court of Justice of the European Union (CJEU) has upheld a decision of the EU General Court (EGC) rejecting Ferrero’s invalidity action based on Ferrero’s earlier trade marks for KINDER against a figurative Community trade mark (CTM) incorporating the words TiMi KINDERJOGHURT.
In 1998, Tirol Milch filed a figurative CTM application for a sign incorporating the words TiMi KINDERJOGHURT covering yoghurt and related goods in Class 29.
Ferrero brought an opposition based on its earlier word mark for KINDER, registered for a range of confectionary products in Class 30. The opposition failed on the basis that the marks were insufficiently similar. Following registration of the mark, Ferrero brought cancellation proceedings before the Cancellation Division of the Office for Harmonisation in the Internal Market (OHIM) which were successful at first instance. The Board of Appeal overturned this decision and Ferrero appealed to the EGC, arguing that the similarity of the marks and goods gave rise to a likelihood of confusion and infringement under Article 8(1)(b) of the CTM Regulation (40/94/EEC, now replaced by 2009/207/EC). Ferrero also argued that the KINDER mark was a well-known mark and that the TiMi KINDERJOGHURT registration took unfair advantage of, or damaged, its reputation or distinctive character without due cause under Article 8(5).
The EGC held that notwithstanding the fact that the word “kinder” was present in both of the signs, there were a number of visual and phonetic differences that precluded the signs from being perceived as similar. It found that even if the reputation of the earlier mark and the similarity of the goods could be taken into account in assessing the likelihood of confusion, this did not affect the assessment of the similarity of the signs. Ferrero appealed to the CJEU.
The CJEU rejected Ferrero’s appeal holding that the existence of a similarity between the earlier mark and the challenged mark was a precondition for the application of both Article 8(1)(b) and Article 8(5). The existence of a likelihood of confusion had to be assessed globally, taking into account all the factors relevant to the case, which included not only the similarity between the conflicting marks but also the strength of the earlier mark’s reputation. However, the reputation and distinctive character of the marks were relevant for the purposes of assessing, not whether the marks at issue are similar, but whether the relevant section of the public makes a link between them.
The global assessment of the existence of a link between the earlier mark and challenged mark under Article 8(5) implied some interdependence between the relevant factors. A low degree of similarity between the marks could therefore be offset by the strong distinctive character of the earlier mark. The reputation or recognition of the KINDER mark and the fact that the goods covered by the respective marks were identical or similar was not, however, sufficient to establish a likelihood of confusion or that the relevant public made a link between them. In order for Article 8(1)(b) or Article 8(5) to apply, the marks had to be identical or similar. Accordingly, the provisions did not apply here where the EGC had ruled that the marks were not similar.
The CJEU noted that it was settled case law that the existence of a “family” or “series” of trade marks was an element that needed to be taken into account for the purposes of assessing the likelihood of confusion. However, that was irrelevant for the purposes of assessing the existence of a similarity between the earlier mark and the challenged mark. It would only become relevant once similarity between the marks had been found. Consequently, the CJEU held that the EGC did not err in law as it found a number of visual and phonetic differences between the marks at issue that precluded them from being similar.