Publications > Nestlé’s attempts to register QUICKY speed up

Société des Produits Nestlé SA v OHIM, Quick restaurants SA, Case C-193/06P (in French).

On 20 September 2007 the European Court of Justice (‘ECJ’), third Chamber, gave judgment in an action relating to a refusal by the Office for Harmonisation in the Internal Market (OHIM), which upheld an opposition, to register an application by Nestlé of a figurative mark. The case was referred back to the Court of First Instance (CFI).

The ECJ, in considering the CFI to have erred in law, re-emphasised that when assessing similarity of signs where one sign is a word mark and the other is a complex word-device sign, it is not enough to decide the matter on a comparison of the verbal elements alone, unless the rest of the complex sign is truly negligible. This judgment reinforces the earlier one, Shaker v OHIM (‘Limencello’) of 12 June 2007, reported in the September 2007 issue of the ITMA Review.

Background

On 6 February 1997, Nestlé filed an application for a Community trade mark with OHIM for the figurative mark ‘QUICKY’ with cartoon figure of a rabbit (reproduced below). It sought registration in relation to foods and non-alcoholic drinks in classes 29, 30 and 32. Quick restaurants SA, based in Belgium, filed an opposition based on various earlier rights, the word sign QUICKIES, registered in the Benelux and in France for identical or similar goods and services in classes 29, 30 & 42, being the grounds accepted by the Opposition Division.

The OHIM Opposition Division upheld the opposition, considering there to be a likelihood of confusion given identity or similarity of goods/services and a similarity of signs according to Article 8 (1)(b) of regulation No 40/94.

Nestlé appealed the decision to the Board of Appeal, but unsuccessfully. The Board considered that although there were visual differences thanks to the figurative element (“the importance of which is not negligible”), because of the closeness of the goods, as well as the phonetic similarity of the words, there was a risk of confusion. Further appeal to the CFI also resulted in a negative for Nestlé. The reasons that the CFI gave, which were the decisive points for the ultimate outcome of the matter, focused on the visual comparison of the marks. These read (in my own translation from the French):

47. “It is well to recall that according to settled case law, a complex trade mark cannot be regarded as being similar to another trade mark which is identical or displays similarity to one of the components of the complex mark unless that component forms the dominant element within the overall impression created by the complex mark...

49. “... in the present case, it is appropriate to begin by analysing the visual similarity between the word elements ‘QUICKIES’ and ‘QUICKY’; then, if such a similarity is found, to ascertain whether the additional graphic or figurative element, specific to the mark applied for, is capable of constituting a distinguishing feature sufficient to preclude any visual similarity between the signs at issue in the eyes of the relevant public. In other words, it is necessary to determine whether, from a visual point of view, the design of a rabbit constitutes the dominant element of the mark applied for, that is to say, whether it is the sole dominant image that the relevant public keeps in mind, or whether, on the contrary, it is a distinctive element with equal or less intensity to the verbal element comprised by the word ‘quicky’.”

50. “The verbal elements ‘QUICKIES’ and ‘QUICKY’ are incontestably similar on the visual plane. With regard to the importance that one should accord to the drawing of the rabbit as element of differentiation between the two signs in conflict, this could not constitute the dominant element in the overall impression produced by the mark applied for to the point that the verbal element ‘QUICKY’ becomes negligible. Indeed, where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark... Besides, the verbal element ‘QUICKY’ is not written in small characters and its graphical representation corresponds to the width of the drawing of the rabbit. Moreover, it occupies, in the mark applied for, a place which is just as important as the drawing, since it is placed in a very visible way, immediately under the drawing.”

The conclusion of the CFI was that, especially given the visual similarities according to the above analysis, there was a risk of confusion in the minds of the relevant public between the conflicting marks.

Grounds of appeal, arguments of the parties and findings of the Court

Nestlé appealed the CFI decision to the ECJ on various grounds, but most decisively on the ground that Article 8(1)(b) of Regulation no 40/94 had been breached. They maintained that the Court had committed an error of law by not applying a global appreciation test to the mark, and specifically, given that one was dealing with a mark that is made up of a particularly distinctive cartoon character together with its name, the figurative and verbal elements could not be dissociated, as the Court had done.

Nestlé had argued that the CFI was wrong to assume that the dominant element of the complex mark was necessarily its verbal component; this was an abstract analysis which was incorrect to the extent that the figurative element could in fact be more distinctive than the verbal and that one could not just go by how products might be ordered orally.

Also, instead of a global assessment of the risk of confusion which included looking at the mark as a whole, the Tribunal had started its assessment of similarity by first comparing the verbal elements and only then looking to the figurative part to see to what extent this made for an element of differentiation. Nestlé’s mark was in fact a cartoon character whose identity was defined by the verbal element, making the verbal and figurative elements inseparable.

OHIM, on the other hand, argued that the Tribunal had not disregarded the visual impression of the figurative part of the mark, having devoted part of its reasoning to each of the parts of the complex sign in order to determine which part was dominant. The design of the rabbit was by definition an element of differentiation with regard to the earlier sign which was a word-only sign. Quick restaurants added, for its part, that it was only logical to begin the comparison with those elements that were most comparable, namely the verbal elements; thereafter one would verify whether the figurative part would be dominant in such a way as to make the verbal element negligible.

The Court

Following the customary recitals of law on what constitutes risk of confusion and the need for a global appreciation of such a risk, with the reminder that the average consumer normally perceives a mark as a whole and does not examine its details, the Court then stated:

35 “...the assessment of the similarity between two marks does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark. On the contrary, such a comparison must be made by examining the marks in question, each considered as a whole.”

Then, referring to paragraphs 49 & 50 of the contested decision, the Court rebuked the CFI for its method of analysis, noting that:

40 “...in proceeding this way, the Tribunal did not appreciate the visual similarity of the signs in question based on the overall impression produced by the signs.”

Having decided that the figurative element was not dominant in regard to the verbal element (in the sense that its ‘intensity’ is equal to or inferior to the verbal element and that the latter is not considered subsidiary or negligible), the Tribunal had erred by not examining the overall impression made by the word/design combination when considering visual similarity, as this was based solely on the word elements (par 41).

Then referring to the recent ECJ ‘Limencello’ decision, 41, the Court stated:

42 “It is true that, according to jurisprudence, the overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or several of its components.”

43 “Nonetheless ... it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element.”

It further continued:

44 “...the fact that an element is not negligible does not mean that it is dominant, in the same way that the fact that an element is not dominant does not imply in any way that it is negligible.”

The Tribunal based its decision on the presumption that when a complex mark is composed at the same time of a verbal and a figurative element, and that the latter is of an equal or lesser intensity to the former, an appreciation of visual similarity can be established solely on the similarity of the verbal elements.

In so doing, the Tribunal, by not making a visual comparison on the basis of overall impression, contravened Article 8(1)(b) of Regulation 40/94. Points 48-50 of the CFI judgment are therefore vitiated by an error in law.

The case was referred back to the Court of First Instance for judgment. Costs were reserved.

Comment

This case comes hot on the heels of Shaker v OHIM (‘Limencello’), and clarifies that one cannot jump to immediate conclusions when comparing word-and-device marks with word-only marks. Does this case in any way hurt the general (unofficial) principle that in trade marks words speak louder than devices? In ‘Limencello’ , the principles of which were often referred to in this judgment, the case went in the opposite direction. A round dish decorated with lemons was considered by the CFI as the dominant element of the complex mark being applied for, the opposition’s word-only mark not being considered to be confusingly similar to the complex mark, despite the strong similarities of the prominent verbal components. However the ECJ overruled the court. Words came out on top (but note: not because they were words). Which goes to show that each case must still be decided according to its own merits and individual circumstances.

And what about the saga of ‘KINDER’? The German Courts recently ruled (‘controversially’) that the well known chocolate manufacturer Ferrero has quite limited protection for its ‘KINDER’ word-and-device marks because of the word element’s descriptive nature, ‘Kinder’ meaning ‘Children’ in German (for a quick overview see the IPKat blog: http://ipkitten.blogspot.com/2007/09/kinder-capers.html). Whether that is true in England has never, to my knowledge, been really decided (would ‘Kinder to Children’ chocolates infringe?). If, for the sake of argument, we accepted the German courts’ decisions as being proper and correct, would one then maintain that the word element KINDER is ‘negligible’ within Ferrero’s word-and-device marks as per European case law? Is descriptive matter, no matter how prominent, always technically ‘negligible’ in a word-and-device mark? In ‘Limencello’, the descriptiveness of the name for lemon-based liqueur, seems to have been overlooked (and the device featuring lemons in a circle is not exactly a million miles away from descriptiveness). We look forward to more cases of this nature for further guidance. In the meanwhile, good luck to Nestlé.

This article first appeared in the Novembert 2007 issue of the ITMA Review