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Milk battles before the CFI

Next Wednesday, the Court of First Instance will issue its judgment on the appeal filed by the Greek dairy products market leader DELTA against decision R0540/2005 of OHIM, upholding the relevant opposition filed by Kraft Foods (case T-204/06).

DELTA had filed a CTM application for the mark ‘MILKO ????? & device’ depicted right for goods in class 30 (milk with cocoa) depicted right. Kraft opposed the registration, invoking its rights in and to various Community and international registrations for MILKA word and figurative marks, registered in connection with identical and similar goods in classes 5, 29, 30 and 32. The Opposition Division accepted the opposition. It ruled that Kraft:
“…. has submitted surveys showing that a substantial amount of consumers knew and recalled the mark ‘MILKA’ as being related to the goods for which it is registered. It also submitted documents showing that it has made a considerable investment in advertising its mark….also provided evidence dating from 2001 until November 2002 concerning brand awareness and showing that there is a high level of brand awareness for the mark ‘MILKA’ ranging from 91% to 97% of the consumers who were questioned. It also submitted documents to prove that the sign ‘MILKA’ has been used in the sponsorship of major sporting events. To this end, it supplied numerous articles from different newspapers, magazines and newsletters which clearly show the sign ‘MILKA’ in relation to these sporting events. Finally, the opponent furnished the Office with details of consumer awareness of the colour lilac pertaining to the sign ‘MILKA’. Between 1996 and 1997, in Germany alone, 91.5% of the consumers who were interviewed associated the colour lilac with the sign ‘MILKA’, in France the figures were 65% and 62% in Belgium etc. Moreover, the Office has already registered the colour lilac as a Community trade mark as the opponent has proven that its sign has gained enhanced distinctiveness in the Community and that consumers recognize this colour as belonging to ‘MILKA’. This in itself shows huge awareness throughout the Community of the sign ‘MILKA’ [this does not seem particularly correct, it would seem that the word indication MILKA is more crucial than the lilac color in the present case].
– The documents submitted are sufficient to prove that the opponent’s earlier Community trade mark No 31344 has acquired enhanced distinctiveness through its use in the Community in relation to the goods for which it is registered. The Office will now limit the comparison to this earlier trade mark…..
– The beginning of both signs is practically identical and only differs in the last letter. Consumers tend to remember the beginning of signs with greater accuracy than the subsequent parts. Therefore, visually, the signs have an average degree of similarity.
– A substantial part of consumers will not be able to read the Greek letters and will either see this as a mere figurative element or will not pronounce it. For these consumers the signs have a high degree of phonetic similarity.
– Conceptually, the words ‘MILKO’ and ‘MILKA’ do not have any meaning in any of the languages of the Community. For English speaking consumers, these words allude to the English word ‘milk’, however, for the remaining consumers the words have no meaning. The word ‘?????’ is the fourth letter of the Greek alphabet. However, a substantial part of the relevant consumer will not understand this meaning. Therefore, for English speaking consumers, as the words ‘MILKA’ and ‘MILKO’ both allude to ‘milk’ conceptually, for these consumers the signs have an average degree of similarity. However, for the remaining consumers who do not understand this reference, no conceptual comparison can be made between the signs.
– Due to the similarity of the signs, the identity of the goods and the high distinctive character of the earlier mark, there is a likelihood of confusion between the marks in dispute for all of the contested goods, in the territory where the earlier mark is protected, i.e. in the Community".
In its appeal DELTA essentially argued that the element ‘?????’ is in fact the dominant part of the CTM application, since it is very fanciful, while ‘MILKO’ contains the descriptive element ‘milk’ which is understood in the entire Community and is included in several trade marks which already co-exist. Furthermore, according to DELTA the mark contains differentiating elements in the form of a figurative element and colours. DELTA also made reference to the fact that the Greek Administrative Trade Mark Committee decided that the differences between the signs were sufficient to avoid a likelihood of confusion (in Greece).

The Board of Appeal dismissed DELTA’s arguments. It ruled that:
"…. The word ‘milk’ in relation to ‘milk products’ is exclusively descriptive and thus devoid of any distinctive character for such goods in the entire Community. However, the word element of the earlier trade mark is not ‘milk’ but ‘milka’. Although ‘milka’ alludes to the product itself or an essential characteristic, this word is not devoid of any distinctive character. Furthermore, and this is undisputed by the applicant, the Opposition Division concluded on the basis of several documents, that the earlier trade mark has obtained an enhanced distinctiveness through use in the European Community."

As regards similarity of the signs, “…… where such a sign consists of several verbal elements, it is quite conceivable that some of them may, because of their size, colour or position, for example, attract the consumer’s attention more, so that he or she, needing to refer orally to the sign, will be prompted to pronounce only those elements and to disregard the others. The visual impression created by the specific graphic features of the verbal elements of a complex sign is therefore liable to influence the sound representation of the sign (see judgment of the Court of First Instance of 25 May 2005 in Case T-352/02 Creative Technology Ltd v OHIM (‘PC Works’) [2005] ECR publication pending, at paragraph 44). In this case, the word ‘milko’ dominates the overall visual impression of the contested trade mark and constitutes the verbal element likely to attract more attention and to be immediately noticed and easily remembered. The other verbal element of the sign ‘?????’ has only a lesser impact in that regard. Firstly, even if the relevant public outside Greece was to perceive the element ‘?????’ as a Greek word, the Board coincides with the contested decision that a significant part of this public would not know how to pronounce the component ????? [this is true but the question is wouldn’t they see it? – the Board’s argument seems to lack subtlety here and later on its reasoning of ornamental character is not so convincing]. The applicant argues otherwise but does not provide any satisfying evidence that might support its arguments [what could such evidence be?]. Furthermore, the element will be more difficult to remember because of its smaller size and position on the bottom. Finally, the word ‘milko’ [mil-ko] closely resembles the only verbal element of the earlier trade mark ‘milka’ [mil-ka] which enjoys a reputation [a correct approach – the issue of course remains whether the remaining elements rule out likelihood of confusion]. … From a visual point of view, the signs contain several additional and differentiating elements. However, in the Board’s view, the figurative element of the ‘milk lady’ within a green triangle together with the red lines, as well as the figurative colour elements that surround the word ‘milko’ will be perceived by the relevant public, as ornamental components. The public will focus on the element ‘milko’ which takes up the central and dominant position of the applicant’s trade mark and which closely resembles the dominant element ‘milka’ of the earlier reputed trade mark. The initial ‘m’ of the word ‘milko’ is very close to the peculiarly stylised letter ‘m’ of the earlier trade mark. Both marks use a similar diagonal written representation of this word. Visually, the signs are similar."

In its appeal before the CFI, DELTA essentially reiterates its arguments. The Court’s decision should be interesting.

Posted by: Nikos Prentoulis @ 11.12
Tags: community trade mark, DELTA, milka, milko, OHIM board of appeals; CFI,
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