A scoop of luck for owners of earlier rights as registered Community design for ice cream cornet rendered invalid

In a case involving a registered Community design for an ice cream cornet display box, the design owner obtained a registration above left (the “Contested Design”) intended to be applied to ‘boxes [packaging]’ in Class 09-03 of the Locarno Agreement.

On 12 February 2014, the applicant (Şölen Çikolata Gıda Sanayi ve Ticaret AŞ) filed an application for a declaration that the contested design be declared invalid, pursuant to Article 52 of Regulation No 6/2002 and the ground for invalidity set out in article 25(1)(e) which enables a Community design to be declared invalid “if a distinctive sign is used in a subsequent design, and Community law or the law of the Member State governing that sign confers on the right holder of the sign the right to prohibit such use”.

The applicant relied on its own trade mark international registration No 1148957, designating, among other Member States, Bulgaria, for the above figurative mark right – the “Earlier Mark” – registered on 10 July 2012, for goods in Class 30 ‘Cocoa, cakes, chocolates, chocolate creams, cakes with cocoa milk, chocolate cream’.

The Invalidity Division rejected the application for a declaration of invalidity. The applicant appealed to the Third Board of Appeal, which dismissed the appeal, finding that there was no likelihood of confusion under article 25(1)(e). The applicant then appealed to the General Court.

Decision of the General Court

The General Court upheld the applicant’s plea under article 25(1)(e), annulled the decision of the Board of Appeal, and granted the application for a declaration that the Contested Design is invalid.

  1. The relevant public

The Board of Appeal found that the goods covered by the Earlier Mark were directed at the general public in Bulgaria, whose level of attention is average, whereas the goods portrayed by the Contested Design were directed at professional consumers in the confectionery industry, who have a high level of attention.

This was found to be incorrect. The box portrayed by the Contested Design was not intended to be used separately from the goods that it contains, namely confectionery, which are directed at the general public. Moreover, the box portrayed by the Contested Design has holes which are intended to accommodate goods in the shape of a cone. It is intended for retailers who market the goods which it contains to end consumers. However, as the Court also observed, it is a display box, namely a box intended to be seen by consumers, that is, to attract their attention, and to display to them the goods it contains.

Consequently, as they will see the box portrayed by the Contested Design, or even handle it, consumers of the goods displayed in the box must be said to form part of the relevant public. Accordingly, the Board of Appeal was incorrect to find that that box was intended only for professional consumers in the confectionery industry and not also for the general public, like the goods covered by the Earlier Mark.

2. Comparison of the goods

The Board of Appeal was entitled to find that the goods in question were complementary and, therefore, similar. It stated, correctly, that the box portrayed by the contested design was intended for stocking and displaying edible cones and that the Earlier Mark had been registered in respect of various items of confectionery, including ‘chocolate creams’, which are often presented in edible cones placed inside boxes similar to those portrayed by the Contested Design.

3. Comparison of the signs

The Board of Appeal described the earlier mark as consisting of the term ‘ozmo’, written in coloured letters, and the English word ‘cornet’. It added that that word is written as ‘корнет’ in Bulgarian and, when transcribed into the Latin alphabet, is written as ‘kornet’, from which it concluded that the general public will understand the meaning of the word ‘cornet’.

It considered that the word ‘cornet’ was devoid of distinctive character and, accordingly, played a minor role in the comparison of the signs at issue, whereas the word ‘ozmo’ was distinctive and dominated the overall impression conveyed by the earlier mark.

The General Court disagreed with this analysis and found that the element “cornet” was not descriptive. Even though the word ‘cornet’ does not, of itself, dominate the overall impression conveyed by the signs at issue and is not especially distinctive, it cannot, on account, in particular, of its position in the signs at issue and its size, be regarded as playing a negligible role in the overall impression conveyed by the signs at issue. Accordingly, due account must be taken of it when comparing the signs.

( a ) Visual comparison

The words ‘bobo’ and ‘ozmo’ are of the same length and each contains the letter ‘o’, which appears twice, once at the end of each word. The words are in capital letters and in very similar fonts. The letters of which they are made up overlap in part in both signs. The word ‘cornet’ is written in both signs in a similar font.

The elements which differentiate the signs at issue visually do not outweigh the considerable similarities between those signs that will be perceived by consumers. Therefore, the Board of Appeal erred in taking the view that those signs are visually different.

( b ) Phonetic comparison

The words ‘bobo’ and ‘cornet’ should be compared with the element made up of the words ‘ozmo’ and ‘cornet’ in the earlier mark. The Board of Appeal was incorrect not to include the word ‘cornet’, common to both signs, in the phonetic comparison of the signs at issue. Contrary to the findings of the Board of Appeal, the signs at issue have an average degree of phonetic similarity.

( c ) Conceptual comparison

It is common ground that the words ‘ozmo’ and ‘bobo’ have no meaning for Bulgarian consumers. Moreover, the Board of Appeal was correct to point out that the signs at issue are conceptually similar because they have in common the element ‘cornet’. However, that conclusion applies only as regards the part of the relevant public that understands the meaning of the word ‘cornet’.

The signs at issue are highly similar visually, have an average degree of phonetic similarity and are conceptually similar for the members of the relevant public who understand the meaning of the word ‘cornet’. For that part of the public that does not attribute any meaning to that word, there can be no conceptual comparison of the signs. Thus, the signs at issue must be regarded as similar overall.

4. The resultant likelihood of confusion

It follows that there is a likelihood of confusion on the part of the relevant public, that being a likelihood that that public might believe that the goods represented by the Contested Design and those covered by the Earlier Mark come from the same undertaking or, as the case may be, from economically-linked undertakings.

Accordingly, the Board of Appeal was not entitled to find that there was no likelihood of confusion on the part of the relevant public or, therefore, to dismiss the appeal before it and the application for a declaration of invalidity under Article 25(1)(e) of Regulation No 6/2002.

Accordingly, the contested decision was annulled.

Case Ref: T-793/16 and T-794/16