ITMA Autumn Conference: Treviso provides cultured backdrop for ...

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 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
November 2007
CASE COMMENT
Nestlé hops in to register Quicky mark
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
ITMA Review 25