The visual impact of TUCs packaging trade marks: a salty biscuit for Apéro

TUC, a trade mark foremost for salted biscuits, owned by the General Biscuits group, obtained a victory today before the District Court of The Hague (G.R.B. van Peursem), in (amongst others) trade mark infringement proceedings on the merits, against Hoppe Food Group B.V. (a Dutch company located in Breda). Hoppe is a company which produces and trades in biscuits and snacks, not only using its own trade marks, but it also active as producer for private labels products. General Biscuits (more especially General Biscuits België B.V.B.A, General Biscuits Nederland B.V. and General Biscuit SAS) raised objections against the use by Hoppe of the following (lay out of a) packaging for salted biscuits. 

According to General Biscuits Hoppe infringed with this use amongst others General Biscuit’s CTM with number 6704605 and the Benelux registration with number 709480, protecting respectively the following trade marks: 

General Biscuits furthermore relied on some allied trade mark registrations with regard to the signs used on the packaging for its TUC biscuits.

The District Court holds Hoppe liable for trade mark infringement on the following grounds. First of all the District Court postulates that the trade marks relied on by General Biscuits (with the exception of the trade mark for the TUC cookie itself, registered in the Benelux with number 435238) reflect on the whole an almost identical lay out of the TUC packaging throughout the years. Next the Court considers what are the characterics of that packaging according to General Biscuits, that is:

- a yellow rearface;

- big white, centred letters in a mostly redlined frame;

- the letters are located in a blue face;

- with several red coloured elements, amongst which red coloured emphasis above the blue coloured face;

- similar positioning with regard to the different elements, including the positioning of the (partly overlapping) depicted biscuits.

With regard to the alleged risk of confusion based trade mark infringement (article 9 par 1 under b CTM and article 2.20 par 1 under b Benelux Treaty on Intellectual Property) the District Court starts with a description of the decisive criterion (in one long sentence): ‘Criterion for finding a risk of confusion - as required by the provisions mentioned above (GvR) - is whether the trade marks as registered and the signs used by Hoppe on its Apéro packaging, considered globally according to the overall impression made by both the trade marks and the signs, on the basis of auditive, visual or conceptual similarity – taking into account the similarity (and in this case: identity) of goods, and the distinctive and dominant elements of the invoked trade marks – display such similarity that there is a possibility that the public, that is the average informed, cautious and careful normal consumer of the goods concerned, gets confused with regard to the trade marks of General Biscuits and the signs used by Hoppe (a direct risk of confusion) or causes an indirect risk of confusion, for example because the impression is created that General Biscuits and Hoppe maintain a certain commercial relationship.’ And the Courts adds that one should take into account all circumstances of the case.

The Court has no difficulty in finding that the goods for which the trade marks and signs are used are identical. The larger the similarity between the goods concerned, the sooner there will be a similarity between the registered General Biscuits trade marks and the use of the challenged signs by Hoppe. This global appreciation of the risk of confusion presupposes a certain connection between the similarity of the involved trade marks and sign and the similarity of the goods. Accordingly a limited degree of similarity between the trade marks and the signs can be compensated for by a high(er) degree of similarity between the goods and in this case – so the Court holds – the goods concerned are identical ((the packaging of) salted biscuits). Furthermore the risk of confusion increases as the distinctiveness of a trade mark is higher.

In view of this the Court holds that there is a visual similarity between the CTM and Benelux trade mark invoked by General Biscuits and the Apéro packaging, which causes confusion as required. The Court quotes the reference by General Biscuits to the ECJ’s decision in the Carbonell/La Espanola case (ECJ September 3, 2009, cas C-498/07), in which the ECJ quotes with assent consideration 68 of the CFI’s decision: ‘that the elements common to the two marks, seen as a whole, produced an overall visual impression of great similarity, since the La Española mark reproduced very precisely the essence of the message and the visual impression given by the Carbonell mark, thus inescapably giving rise to a likelihood of confusion on the part of the consumer between those marks.

The Court considers that one of the relevant circumstances of the case which should be taken into account when considering the risk of confusion is how the invoked colour indications are used by General Biscuits. Hoppe uses these indications in a similar way. As the Court sets forth this is called ‘visual impact’ in European trade mark case law.

The fact that the invoked trade marks contain also the eye-catching word element TUC, an element that differs from the word element APÉRO, can not prevent the Court to consider that the other distinctive trade mark elements invoked by General Biscuits should be weighed, since what matters is a global appreciation, for a finding of a risk of confusion, because the involved trade marks and allegedly infringing sign should be examined in their entirity. This is especially the case with supermarket products which are bought without a lot of contemplation. Thus what counts for the consumer is the visual impact of the trade mark searched for (as was argued by General Biscuits).

Basically on these grounds of reasoning the Court grants the claims by General Biscuits (cross border injunction througout the EU, disclosure of relevant information, recall, destruction of packaging still in stock, penalties, damages and compensation of procedural costs. An important decision which also contains interesting considerations with regard to the requirements for proper market research reports, the relevance of colour indications in combined trade marks and the monopolization of colours.
Posted by: Gino Van Roeyen @ 21.01

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