Being cruel to be KINDER: ECJ says "yes" to TiMi

Being very fond of both yoghurt and children, tytoc collie has long taken an interest in Case C‑552/09 P, Ferrero SpA v Office of Harmonisation in the Etc Etc, Tirol Milch reg.Gen.mbH, Innsbruck another Community trade mark appeal in which sentiment, rather than sense, led the appellant to the Court of Justice of the European Union and into a defeat which not even the best counsel of the Kat's noble friend Charles Gielen could prevent.

In short, Tirol Milch Innsbruck (TiMi) applied to register the figurative mark represented above as a Community trade mark in Class 29 for "yoghurt, fruit yoghurt, yoghurt drinks, yoghurt drinks containing fruit; semi-prepared and ready-to-serve meals based mainly on yoghurt or yoghurt products; yoghurt creams" [i.e. yoghurt and some things you can do to it]. Ferrero opposed, citing its earlier Italian registration of the word KINDER (German for "children") in Class 30 for "coffee, tea, sugar, rice, tapioca, sago, coffee substitutes; bread, biscuits, cakes, pastry and confectionery, edible ice-creams; honey, treacle, yeast and baking powders; salt, mustard; pepper, vinegar, sauces, spices; edible ice; cocoa, cocoa products, namely cocoa paste for cocoa drinks, chocolate paste, coverings, namely chocolate coverings, chocolate, pralines, decorations for Christmas trees made of chocolate, goods made of an edible chocolate case with an alcoholic filling, sugar articles, confectionery, including fine and hard pastry" [in other words, not yoghurt, or indeed anything overtly milky].  Said Ferrero, the similarity of the marks and goods will lead to a likelihood of confusion (Article 8(1)(b) of the CTM Regulation) and, in any event, it's a well-known mark and TIMI's registration takes unfair advantage of, or damages, its reputation or distinctive character without due cause under Article 8(5).

The opposition was dismissed, the mark was registered -- but that was just the beginning of the story. Ferrero then launched cancellation proceedings and, in March 2007, OHIM's Cancellation Division declared TiMi's mark invalid under Article 8(5). The Second Board of Appeal reversed this decision, saying the mark was validly registered. In its view, although decisions in opposition proceedings did not in law have the force of res judicata, the Cancellation Division was bound by the substantive findings and conclusions of the earlier opposition by virtue of the principle nemo potest venire contra factum proprium, in accordance with which "the administration must comply with its own acts, particularly where those acts have enabled parties to the proceedings legitimately to acquire rights in a registered trade mark". In any event, the two marks weren't identical or even similar, so there was no basis on which the opposition or cancellation proceedings could succeed. The General Court agreed, observing that the fact that both marks did indeed contain the word "kinder" did not mean that they were similar, given the many obvious differences between them.

tytoc collie examines the evidence

This morning Ferrero's final appeal, to the ECJ itself, was dismissed. However reputed and distinctive the KINDER mark might be, no amount of fame and reputation could make it similar to a mark that wasn't similar to it (taking the distinctiveness and repute of a mark into account is handy for assessing whether there is a likelihood of confusion between marks that are similar, and it's sometimes handy for showing that two marks can't be confused, as in Case C-361/04 P Ruiz-Picasso v OHIM, but can't make two marks similar if they're not).  Even the fact that KINDER was one of a family of 36 marks, each of which contained the word "kinder", wasn't going to help.

Make your own yoghurt here
Make your own children here
Why yoghurt is good for you
Why children are good for you

The sleep of reason? Baby you CA drive my KA

From the day of its launch, this Kat has always disliked the Ford KA trade mark.  He has remained uncertain as to how to pronounce it: is it "Ka" to rhyme with "car", which is naughty if it's registered and used for cars? Or is it "Ka" to rhyme with "Kat" but with the "t" chopped off?  But now he's feeling quite sorry for it, following today's ruling of the General Court in Case T‑486/07, Ford Motor Company v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Unnecessarily Long and Pompous Name), Alkar Automotive, SA.  

In short, Alkar applied in June 2003 to register as a Community trade mark the figurative sign CA (illustrated, above right) for a range of items which included parts for cars.  Ford opposed, citing earlier Community trade marks for the word KA and the figurative mark containing the word KA (illustrated, left).  The opposition was based on the submission that, on account of the similarity of the marks and the identity/similarity of the goods, there was a likelihood of confusion.  In November 2005 the Opposition Division rejected the opposition and, in October 2007, the Fourth Board of Appeal upheld that decision.  In its view, the mark applied for and each of the earlier marks were sufficiently dissimilar to exclude any likelihood of confusion on the part of the relevant public -- no matter how similar the goods concerned were and despite the fact that the distinctiveness of the earlier trade marks was higher than average.

Today the General Court upheld the decision of the Board of Appeal. On the issue of phonetic similarity the Court had this to say:

" The Board of Appeal found that the fact that the group of letters ‘ca’ could be recognised in the mark applied for did not create a notable similarity with the earlier word mark. The striking graphical differentiation between those two letters in the mark applied for will cause, according to the Board of Appeal, the relevant public to read them separately, as an abbreviation [and therefore not to pronounce them?]. It further found that the earlier mark would be read as an abbreviation or as one word. The striking differences regarding the first letter will therefore remain in the phonetic comparison .... According to the Board of Appeal, the foregoing reasoning applies equally to the comparison between the mark applied for and the earlier figurative mark ...

67 Therefore ... the Board of Appeal did not base its assessment of phonetic similarity between the marks at issue on the alleged rule that the first letter of a word is the most important. Consequently, that argument by the applicant must be declared ineffective.

68 In addition, in so far as the applicant argues that, independently of the position of the letters of a word made up of a consonant and a vowel, it is the vowel and not the consonant which dominates the overall phonetic impression of such a word, it must be noted that although a vowel is indeed more audible than a consonant the phonetic prominence of a vowel in a word composed only of a consonant and a vowel does not render the consonant negligible in the pronunciation and in the phonetic perception of that word [Merpel read this three times and then gave up trying to understand it ...]. The overall perception of the consonant and the vowel must therefore be taken into account in the assessment of the phonetic similarity of the marks at issue.

69 In the present case, despite the particular graphics of the mark applied for, the mark could also be perceived by the relevant public as the word ‘ca’ and not as an abbreviation. In addition, even though the trade mark applied for might in that case be pronounced differently depending on the relevant language, that trade mark might be pronounced and perceived phonetically as ‘ka’, that is to say in the same manner as the earlier marks. Therefore, a degree of phonetic similarity between the marks at issue must be recognised.

70 However, the Board of Appeal was correct to find that the relevant public will perceive the mark applied for as an abbreviation rather than a word and that therefore it will not be pronounced or perceived phonetically as ‘ka’. [can't something be both an abbreviation and a word, like "OHIM" or "WIPO"?]

71 Therefore, some degree of phonetic similarity between the marks at issue must be recognised but it is not very high. Without making an error, the Board of Appeal therefore could find that the phonetic similarity between the marks at issue was not ‘notable’".

tytoc collie thinks this would be laughable if it weren't so tragic.  It was only in December that the General Court found, in Case T-35/08 Codorniu Napa v OHIM - Bodegas Ontañon (ARTESA NAPA VALLEY), that the two marks represented here were confusingly similar with one other, even though they plainly aren't and 82% of IPKat readers who responded to the poll agreed that they weren't.  The Court was influenced by the phonetic similarity of the words ‘arteso’ and ‘artesa’ in that case, even though the figurative signs weren't remotely close. Now, signs insisting of the letters KA and CA aren't phonetically close enough, when the figurative elements consist of scarcely anything except the latters letters KA and CA.  Knowing that Ford can afford to litigate and that appeals to the Court of Justice of the European Union are cheap, the Kat suspects that an appeal may be in the offing -- though given the current state of European trade mark law he wouldn't bet his bottom dollar on a reversal.

Merpel adds, look at this: application in 2003, opposition in 2005, Board of Appeal decision in 2007, General Court ruling in 2011, plus total over-intellectualisation of the process of comparing marks.  Does anyone say there's no need for reform of the European trade mark system?

Baby you can drive my car here
KAKA here

Germany not too far from Spain to cause prejudice, rules court

In bygone times, when Court of First Instance (now General Court) rulings on Community trade mark matters were not as plentiful as strawberries at Wimbledon, tytoc collie used to report a good many of them.  Now, since these rulings are almost too many to be of any interest at all, he writes about them less frequently. Today's appeal, in Case T-50/09 Ifemy’s Holding GmbH v OHIM, Dada & Co. Kids Srl, however caught his eye.

An Italian company, Dada & Co. Kids, applied to register a figurative mark which included the words "Dada & Co. kids" in Class 25 for "clothing, footwear, headgear". Munich (Germany) based Ifemy opposed, citing an earlier German word mark, DADA, registered for the same goods in the same class. Dada asked for proof of genuine use of the earlier mark, so Ifemy sent a fax to OHIM in Alicante (Spain) supplying a list of documents on which it sought to rely for proof of genuine use of its mark. The fax arrived on time, but the 202-page bundle of documents didn't. The Opposition Division and the Board of Appeal, dismissing the opposition, agreed that the documents were inadmissible since they arrived late. Ifemy then appealed to the General Court, which upheld the decisions of the lower instances.

Readers might like the following argument:

"56 The applicant [ie Ifemy, who was applying to annul the Board's decision, not to be confused with Dada who was only the trade mark applicant ...] submits that OHIM’s practice discriminates, in breach of the Treaty, against persons established in the ‘further parts of Europe’, who have considerably less time than those established in Spain to send their letters to OHIM within the time-limits – usually two months – which it sets them. To be sure that a letter is received in time ...any person not resident close to where OHIM is located has to send the letter about two weeks before the time-limit expires, whereas persons resident in Spain can use the full time-limit. In addition, that practice is likely to encourage interested parties to move closer to OHIM’s location or to employ law firms close to it, which hinders the free flow of business.

57 OHIM’s argument that everyone is free to send their communications by fax is mistaken. First, some documents, in particular those in colour, cannot be sent by fax [Not true, says tytoc collie, who once had a colour fax: they ran to the none-too-popular ITU-T30e standard.  Further, adds Merpel, they generally can be sent -- the problem is that they usually can't be received]. Second, as in the present case, some communications are too large to be able to be sent by fax without malfunction [tytoc collie's experience was that the same applied to small and medium-sized documents, which is why he no longer has a fax].

58 The applicant states that there are a number of alternatives to OHIM’s practice that are based on objective and non-discriminatory criteria. For example, OHIM could allow communications by email, as the General Court does [What! In the 21st century!], or indeed take into account the date on which a fax is sent and accept proof of genuine use sent within the time-limit set, but received after its has expired. ...

62 Rule 22(2) of Regulation No 2868/95 provides:

‘Where the opposing party has to furnish proof of use or show that there are proper reasons for non-use, [OHIM] shall invite him to provide the proof required within such period as it shall specify. If the opposing party does not provide such proof before the time limit expires, [OHIM] shall reject the opposition.’

63 It follows from the wording of that provision that the time-limit which it lays down is a strict time-limit which means that OHIM cannot take account of evidence that is submitted late ...

64 Such a time-limit, like the periods for lodging complaints and bringing actions, is a matter of public policy and cannot be left to the discretion of the parties or the Court, which must ascertain, of its own motion if need be, whether it has been complied with. That time-limit meets the requirement of legal certainty and the need to avoid any discrimination or arbitrary treatment in the administration of justice ...

65 ... Rule 22(2) of Regulation No 2868/95 must be interpreted as meaning that proof is ‘furnished’ not when it is sent to OHIM but when it reaches it.

66 First, that interpretation is borne out, in terms of their literal meaning, by the use of the two verbs ‘to furnish’ and ‘to provide’ proof to OHIM in the wording of Rule 22(2) of Regulation No 2868/95. Both of those verbs convey the idea of moving or transferring the proof to the place at which OHIM is located, the emphasis thus being placed on the result of the action rather than on its origin. ...

70 ... that interpretation also meets the requirement to avoid any discrimination or arbitrary treatment in the administration of justice, in that it makes possible the same methods of calculating time-limits for all the parties, irrespective of their residence or nationality.

71 It is settled case-law that the principle of equal treatment or non‑discrimination requires that comparable situations must not be treated differently and that different situations must not be treated in the same way unless such treatment is objectively justified ...

72 In the present case, it is indeed true, as OHIM acknowledges, that parties who are established or resident a long way from Alicante (Spain) may be disadvantaged compared to other parties, established or resident close to that city, when they communicate with OHIM by post.

73 However, the mere fact that the time it takes to deliver a letter by post varies according to the country of dispatch does not allow the conclusion to be drawn that the taking into account of the date of receipt of the proof provided under Rule 22(2) of Regulation No 2868/95 discriminates between the persons concerned according to the country in which they are located when that proof is sent ...

On the whole, the postmen in Spain are okay --
but once they start on the old flamenco,
there's no stopping them

75 ... the fact that the time it takes to deliver a letter by post to Alicante varies according to the country of dispatch is to a certain extent offset by the opportunity for any person concerned, when appropriate under the circumstances, of requesting an extension of the period, in accordance with Rule 71(1) of Regulation No 2868/95. In addition, Rule 72(4) of that regulation provides that, if an exceptional occurrence such as a natural disaster or strike interrupts or dislocates proper communication from the parties to the proceedings to OHIM or vice versa, the President of OHIM may determine that for parties to the proceedings having their residence or registered office in the State concerned or who have appointed a representative with a place of business in the State concerned, all time-limits that otherwise would expire on or after the date of commencement of such occurrence, as determined by him, are to extend until a date to be determined by him. ..."

tytoc collie notes that Spain is a very popular destination for Germans; Ifemy could have flown the 202 pages of evidence themselves in just 2 hours and 35 minutes -- or they could have given the envelope to a passing tourist at the airport and slept soundly. Merpel says, a little unkindly, I thought the problem wasn't the time spent getting letters to Spain and indeed back again, but the length of time before the correspondence gets read and acted upon.  It's more than four and a quarter years since Ifemy lodged its opposition and it seems silly that so much time has been spent getting to this stage in the hostilities.

Worst postal service in the world: is it France, the United Kingdom or Ireland?