THURSDAY, 15 OCTOBER 2009
Are Kinder of Ferrero and TiMi similar?

             V.                

In its unusually rich with latin phrases decision of 14 October the CFI dealt with Ferrero's complaint against the Board of Appeal and application for invalidation of the Tirol Milch reg.Gen.mbH Innsbruck's mark. (Note that Ferrero's mark was for chocolates and sweets (Class 30) rather than milk products of TiMi in Class 29). The former issue became a matter for the dispute once the Board of Appeal announced that the Cancellation Division (which was dealing with the opposition proceedings previously brought by the applicant in the case) was bound by the nemo potest venire contra factum proprium rule. According to this principle the administration is bound by its own acts, especially when the latter enabled for a legitimate acquisition of rights for a registered trade mark.

The applicant invoked a range of arguments varying from the denial of the nemo potest rule all together to the claim that the proprietor of a mark should not have any legitimate expectations that he would not be sued as he successfully defended his case in the opposition proceedings. Although the OHIM tried to allege that the contested rule was applicable for the protection of the acquired rights, the principles of legal certainty and legitimate expectations, eventually it admitted that the Board of Appeal did err in its conclusions that the decision of the Opposition Division had the force of res judicata (which would bind the Cancellation Division to follow the findings of another administrative body).

However, before the contested decision could be annulled, the OHIM asked the CFI to determine  whether the Board of Appeal erred once more when ruled on the merits of the case in question. The main issues referred to the CFI's attention by the applicant (and totally denied by the OHIM) were Ferrero's reputation and the use of the word KINDER by both parties. Having applied Articles 8(1)(b) and 8(5) of the Regulation No 40/94 the Court held that the marks in question had visual and phonetic features which precluded the marks from being perceived as being similar. For example, the stylised font in which KINDERJOGHURT was written did not make the sign visually similar to the earlier mark. Additionally, TIMI was the word attracting the most of consumers' attention.

Posted by: Sasha Yelnik @ 09.15
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