On 20 September 2007, the ECJ handed down its decision in Société des Produits Nestlé SA v OHIM, Quick restaurants SA (Case C-193/06P).
In this case, a trade mark application for the word QUICKY, in combination with a rabbit device was filed by Nestlé. The other parties to the proceedings were OHIM and Quick Restaurants SA, the party that opposed the trade mark application on the basis of its trade marks, QUICKIES and QUICK.
The CFI (Case T-75/04) had found that:
- there was a likelihood of confusion where a composite mark with a graphic element had an identical or similar verbal element to an earlier word mark.
- The exception to this rule was that the word element was subsidiary to the non-verbal element. If such a similarity was recognised between the verbal elements, the supplementary graphic elements would be examined in respect of their capacity to render a sufficient visual differentiation to surmount the similarity founded by the word elements. In the event, the CFI held that the verbal elements were similar and the graphics were not dominant enough to overcome the effect established by the verbal elements.
However, the ECJ decided that the CFI had made an error of law on the grounds that it failed to assess the mark in its entirety, particularly the CFI had not assessed the visual similarity of the signs. In other words, the decision of the CFI was not regarded as a global assessment because it was only based on the consideration of the word elements. The name, the graphic elements and verbal elements of the complex mark should not have been separated in the courts assessment since the composition was of a particularly distinctive character. The ECJ referred to its previous decision in LIMONCHELO (Case C-334/05P) which held that it was permissible to make the comparison on the basis of the dominant elements only when all other components of a complex mark were negligible.
This case may be regarded as a significant decision in the assessment of the likelihood of confusion between a complex mark and a word mark. When dealing with the complex marks containing both visual and verbal elements, the ECJ considers that the marks should be examined in their entirety and a global assessment is necessary.