OHIM strongly supports the standpoint that even a weak distinctiveness of an earlier three-dimensional trademark, when dealing with a great similarity to a later design and very close similarity between the goods may create a risk of confusion.

In the case to which the decision of the Board of Appeal of 8 September 2015 (Case R 1150/2012-3) referred, a confusing similarity between the Community Registered Design No 826680-0001 and a French trademark IR- 405177 was found. Indeed, there is not much controversy on the similarity between the goods as the design evidently includes candies whereas the trademark is destined for such goods too.

Furthermore, OHIM believes that the difference between the boxes is insufficient as well, yet the graphic depiction of the earlier sign, namely a narrow rectangular box with an opaque cap and an ‘overlapping’ label extending to the front and rear sides of the box, is effectively fully included in the challenged RCD. 

 A different manner of finishing of the boxes was noted where one features round edges and the other features sharp edges. Yet the rounding of the edges of the first box was not sufficiently visible in the views of the packaging as applied. Moreover, according to OHIM, the consumers often tend to look at the packaging from the front side and from such a perspective the difference is not very noticeable.

Referring to the differences, OHIM stated that The only substantial visual difference presented by the challenged RCD is the fact that the box is full of small orange and green sweets, and it bears a colourful label in orange and green, bearing inter alia the wording MIK MAKI, whereas IR is for an empty box with a similarly shaped label but without wording or illustrations. The fact that the RCD is shown full of sweets cannot constitute a relevant point of comparison, since the design is registered merely for the box or container of such sweets, and it is clear that the IR is registered also for use in respect of sweets. In the case of the label on the RCD, the depiction of a citric fruit and the banal green and orange colouring of this label (mirroring the colouring of the sweets in the box) will be perceived by the relevant public to be merely ornamental or referring to the taste of the sweets (orange and lime), and is thus a negligible element in the comparison of the signs.

Additionally, the small cursive scripts in the Polish language was deemed to be insignificant. Likewise, the wording MIKI MAKI due to its relatively small size and being written in the same colour as the background was not considered to be dominant. In result of the above, the design and the trademark at issue were found to be highly similar.

Also, considering the rule of interdependence between the factors taken into account and, in particular, similarity between the signs and between the goods or services covered, and although it was communicated only as a preliminary remark, also considering the rule in line with which the more distinctive (per se or due to reputation) the earlier mark, the greater the risk of confusion, OHIM found the likelihood of confusion in this case and upheld the previous decision.

The Board devoted a few words to the formal issues. There is no requirement that all the evidence in support of the grounds is attached as a paper copy to the statement of grounds. It suffices that the written reasoned statement includes an indication of the evidence, copies of which may be annexed either in paper form or on an accompanying CD.