In a recent judgment, the Greek Court of Cassation, Areios Pagos, seems to reject the post-sale confusion doctrine, albeit indirectly. The case involved an infringement action filed in connection with the well-known TOBLERONE chocolate. Kraft, owner of various Greek and international trade mark registrations in and to the pyramid shape of the TOBLERONE chocolate sought to obtain an injunction against the marketing of a chocolate under the word trade mark ALMONDO and differerent packaging in terms of color combination. However, the ALMONDO chocolate was also pyramid-shaped and Kraft argued trademark infringement of its earlier trademarks in and to the shape of TOBLERONE (likelihood of confusion/association and dilution), as well as unfair competition (passing-off) due to the similarity of the shape of the two products, in addition to or regardless of, trade mark protection.
Kraft was successful before the Athens First Instance Court, but lost on appeal (however the Athens Court of Appeal had recognized the reputation of the TOBLERONE product shape). With decision No. 1660/2008, Areios Pagos upheld the decision of the court of appeal and rejected, in a 4-1 majority vote, Kraft’s claims, More specifically, Areios Pagos ruled that the dissimilarities in the packaging of the two products excluded likelihood of confusion and that the similarity of the products’ shape does not suffice to establish such likelihood, in the absence of similarity of the relevant word marks and packaging.
It is interesting to note that the single minority vote came from the Court’s rapporteur (i.e. the member of the court with the duty to draft an opinion for the case before the hearing, which the litigants have access to and which is the base for the discussion of the case), who was of the opinion that Kraft’s trade marks were infringed upon by the marketing of the ALMONDO chocolate. Her (not strictly legal) argument can be summarized in the proposition that, under the majority ruling, anyone could use the fanciful/original/famous product shape of a competitor and profit from its reputation or distinctiveness, with the pretext of a different package and/or word indications.
Apparently, the majority and minority opinions focus on different aspects of the case (confusion vs dilution), yet neither seems to address what appears to exressly address a core issue, the possibility of consumer post-sale confusion, i.e., the likelihood that when consumers – after hastily disposing of the package under the influence of chocolate fever – are confronted with the bear products (and the bear truth that they are the same) may consider that the two products have common origin or that there is a commercial connection between the entities producing/marketing them. Additionally, examination of the possibility of the creation of a link (first step towards dilution) in the minds of consumers is also absent form the court's dictum . With regard to the luck of the post-sale confusion doctrine in Italy, see earlier Class 46 post here. Another interesting feature of this litigation, in the light of the “change of economic behavior” test introduced in Intel is that the Kraft had, unsuccessfuly argued loss of sales brought about by the marketing of the ALMONDO product.