The company Excalibur City s.r.o. filed applications for registration of EU trademarks for the word mark MERLIN’S KINDERWELT and for the word and figurative mark pictured below. “The marks were inter alia applied for 'entertainment and amusement games' services in Class 41.”
Ferrero S.p.A., an Italian company and the third largest chocolate producer and confectionery company in the world, opposed the marks, relying on two earlier Italian trademarks, both with the word mark KINDER, registered in Classes 30 and 41, respectively. The opposition division rejected the oppositions. The Board of Appeal of the European Union Intellectual Property Office (EUIPO) upheld the oppositions and held that there was likelihood of confusion between the signs KINDER and MERLIN’S KINDERWELT, on account of their common dominant element ‘kinder.’ Excalibur City filed claims against these decisions with the General Court of the EU (EGC) (decisions of September 20, 2016 - T-565/15 and T-566/15).
The EGC took a different view on the cases. The EGC found that the word element ‘merlin’s’ in the mark applied for had an average degree of distinctiveness. The fact that a term such as ‘merlin’s’ may be evocative, in some circumstances, of the specific theme of Arthurian legend does not mean that it is descriptive of the goods covered by the mark applied for. Further, the EGC found that the element ‘kinderwelt’ does not have a dominant character, no more than the element ‘merlin’s,’ and that none of those elements dominates the overall impression created by the mark applied for. Consequently, the conflicting marks were to be compared as a whole. The ECG held that there was no risk of confusion between the signs at issue as they were neither visually nor phonetically similar.
In cases where signs have a meaning in a certain language, the opposing party should carefully decide whether to base the opposition on a national mark. This can influence the outcome of a case as the conflicting marks are examined from the perspective of the consumer located in the jurisdiction of the opposition mark. In the case at hand, for the average Italian consumer the word element ‘kinderwelt’ (“kids world”) has no meaning.
What is interesting about this case is that both parties relied on prior decisions in their favor involving Ferrero’s trademark KINDER. On the one hand, the EGC held that the signs TiMi KiNDERJOGHURT and KINDER were not similar (T-140/08). On the other hand, the EGC held that there was a likelihood of confusion between the signs KINDERTRAUM and KINDER (T-580/10). This demonstrates that, in trademark matters, nothing is certain and decisions vary depending on the circumstances of the individual case.
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