Legal Update - Trade Marks â€“ Regulation No 207/2009

Intellectual Property Lawyers – Trade Marks – OHIM – Likelihood of Confusion – Regulation No 207/2009

In the recent unreported case between Lidl Stiftung & Co. KG v. The Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2013] (“OHIM”) (Case T-237/11), OHIM’s decision to dismiss an appeal against the opposition to a trade mark application in respect of the word mark BELLRAM was upheld.

Background

In May 2006 Lidl (the “Applicant”) applied to register the word mark BELLRAM as a registered Community trade mark in respect of Class 29 of the International Classification of Goods and Services for the Purposes of the Registration of Marks, specifically ‘cheese’.
In January 2007, Lactimilk, SA (“L”) filed a notice of opposition against registration of the mark applied for.
L’s opposition was based on earlier registered Spanish marks, namely (i) two figurative marks with the word RAM; and (ii) the word mark RAM.
The figurative marks were registered for Class 29 with the following descriptions:
- ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits, vegetables, meat and fish; jellies, compotes; eggs; edible oils and fats; pre-prepared courses made of meat, fish or vegetables and specially milk and milk products, yoghurt, cheese, butter, margarine, and fresh cream (milk product)’; and
- ‘All kind[s] of butter, fresh milk, condensed milk and powdered milk, cheese, butter, yoghurt, kefir, and other derivatives of milk’.
The word mark was also registered for Class 29 and had the following description: ‘Fresh milk, condensed milk and powdered milk, cheese, butter, yoghurt, kefir, and other derivatives of milk’. This was later supplemented to include: ‘Food product[s] of animal origin; edible fats and oils; pulses and other vegetables prepared for consumption or preserved; jellies and marmalades; meat, poultry and game; eggs; salad dressings; milk drinks in which milk is the basic ingredient; expressly excluding conserved fish and sea products’.

The Law

The grounds for opposition were that the mark applied for by the Applicant was identical or similar to the earlier marks and covered identical or similar goods and thus there was a likelihood of confusion on the part of the public. (Article 8(1)(b) of Regulation No 207/2009).

Opposition Upheld

L’s opposition was upheld by the Opposition Division of OHIM in August 2009.
The Applicant appealed against this decision.

Appeal Dismissed

The Fourth Board of Appeal considered that the assessment of the likelihood of confusion could be undertaken only with respect to that mark to the exclusion of the other two figurative marks (as only proof of registration of the earlier word mark RAM had been adduced by L).
- Comment: The Opposition Division had compared the mark applied for with one of the figurative marks and not the work mark.
As to the assessment of likelihood of confusion:
- the proof of the genuine use of the earlier word mark had been adduced only for ‘milk, cream, milk drinks in which milk is the predominant ingredient’, so the mark could only be deemed registered in respect of those goods;
the Fourth Board of Appeal considered that there was similarity between ‘milk, cream and milk drinks in which milk is the predominant ingredient’ and ‘cheese’ covered by the mark applied for.The Fourth Board of Appeal also considered that the signs in question were similar and the earlier work mark had acquired enhanced distinctiveness through intensive use.
The final conclusion was that there was a likelihood of confusion between the earlier work mark and the applied for mark.
In March 2011, the Fourth Board of Appeal of OHIM dismissed the Applicant’s appeal.

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© RT COOPERS, 2013. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.