Case T-140/08

Ferrero SpA

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Invalidity proceedings – Community figurative trade mark TiMi KiNDERJOGHURT – Earlier word mark KINDER – Relative ground for refusal – Lack of similarity of the signs – Earlier opposition proceedings – Absence of res judicata – Article 8(1)(b), Article 8(5) and Article 52(1)(a) of Regulation (EC) No 40/94 (now Article 8(1)(b), Article 8(5) and Article 53(1)(a) of Regulation (EC) No 207/2009))

Summary of the Judgment

1.      Community trade mark – Surrender, revocation and invalidity – Action for cancellation – Relationship between a final decision in opposition proceedings and an application for a declaration of invalidity – Res judicata – Scope

(Council Regulation No 40/94, Arts 52(4) and 96(2))

2.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services

(Council Regulation No 40/94, Art. 8(5))

3.      Community trade mark – Surrender, revocation and invalidity – Relative grounds of invalidity – Registration contrary to Article 8(5) of Regulation No 40/94

(Council Regulation No 40/94, Arts 8(5) and 52(1)(a))

1.      The principle of res judicata, which prohibits a final judicial decision being called into question, is not applicable so far as concerns the relationship between a final decision in opposition proceedings and an application for a declaration of invalidity, given, inter alia, first, that proceedings before the Office for Harmonisation in the Internal Market (Trade Marks and Designs) are administrative and not judicial and, second, that the relevant provisions of Regulation No 40/94 on the Community trade mark, namely Article 52(4) and Article 96(2) lay down no rule to that effect.

Further, the findings made in the final opposition proceedings decision cannot be entirely ignored when deciding an invalidity action having the same parties, the same subject-matter and the same grounds, provided that those findings or decided issues are not affected by new facts, new evidence or new grounds. That assertion is no more than a specific expression of the case-law according to which the previous decisions of OHIM are a factor which may be taken into consideration in assessing whether a sign is suitable for registration.

On the other hand, in invalidity proceedings, the departments of OHIM are not bound by findings made in a final decision handed down in opposition proceedings, according to the rule nemo potest venire contra factum proprium, the protection of acquired rights, and the principles of legal certainty and the protection of legitimate expectations. First, since no force of res judicata attaches to a decision, even when final, handed down in opposition proceedings, that decision is incapable of creating either acquired rights or a legitimate expectation as to the result of a subsequent action for a declaration of invalidity. Second, if that were not the case, any action for a declaration of invalidity challenging the registration of a Community trade mark on which a decision had been made in opposition proceedings would, where the parties to the dispute were the same, the subject-matter was the same and the grounds were the same, be deprived of any practical effect, although such a challenge is permitted under Regulation No 40/94.

(see paras 34-36)

2.      To satisfy the condition of similarity of marks laid down in Article 8(5) of Regulation No 40/94 on the Community trade mark, which provides protection for an earlier mark enjoying a reputation for dissimilar goods or services, it is not necessary to prove that there exists, on the part of the relevant section of the public, a likelihood of confusion between the earlier mark with a reputation and the challenged mark. It is sufficient for the degree of similarity between those marks to have the effect that the relevant section of the public establishes a link between them. The existence of such a link must be appreciated globally, taking into account all factors relevant to the circumstances of the case. In relation to the visual, aural and conceptual similarities of the marks at issue, the comparison of the signs must be based on the overall impression produced by the marks, taking account, inter alia, of the distinctive and dominant elements of those marks.

(see para. 54)

3.      The figurative trade mark TiMi KiNDERJOGHURT registered as a Community trade mark for ‘Yoghurt, fruit yoghurt, yoghurt drinks, yoghurt drinks containing fruit; semi-prepared and ready-to-serve meals based mainly on yoghurt or yoghurt products; yoghurt creams’ within Class 29 of the Nice Agreement, cannot be declared invalid, under Article 52(1)(a) of Regulation No 40/94 on the Community trade mark, because of the existence of the relative ground for refusal referred to in Article 8(5) of that regulation, since that mark and the mark KINDER registered earlier in Italy for goods in Class 30 of the Nice Agreement are not similar.

First, the word ‘kinder’ is merged with the word ‘joghurt’, which means that they have no specific, independent existence. Not only do the words ‘kinder’ and ‘joghurt’ have the same visual significance, but the stylised unevenness of the dancing, undulating font used for the word ‘kinderjoghurt’ turns them into a harmonious unit in which the two constituent words have become barely perceptible. Those special features show that the word ‘kinder’ is not merely attached to the word ‘joghurt’. Moreover, because of the stylised font used for the word ‘kinder’ in the challenged mark, that mark is not visually similar to the earlier word mark on which the invalidity action is based, for which a standard font is used.

Secondly, it is clear that the word ‘kinder’ in the challenged mark is merely part of the word ‘kinderjoghurt’, which is of only secondary importance as compared with the word ‘timi’.

Thirdly, unlike its position in the earlier word mark on which the invalidity action is based, the word ‘kinder’ is found in the challenged mark between two other words namely ‘timi’ and ‘joghurt’. Such a difference substantially weakens not only any aural similarity between the two signs because of the shared element, but also any visual similarity as a result of that common element. Accordingly, the word ‘kinder’ is a negligible element in the overall impression produced by the mark at issue.

(see paras 56-58)