Kraft Strikes Gold in Trade Mark Opposition

Two cases involving the word 'ORO' which is registered as both an Italian and Community trade mark ("CTM") has been heard by the General Court of the European Union ("EU").

The cases assessed the likelihood of confusion under Article 8(1)(b) of Regulation 207/2009, and considered the EU's different language regimes in its comparison of the signs.

Background

In both cases Kraft Foods Italia's ("Kraft") opposed applications by Nutrexpa for the registration of figurative CTM's including the words 'Cuétara MARIA ORO'.  Kraft's opposition to the applications relied on several pre-existing Italian and CTM figurative marks for 'ORO' ("Opposing Marks").  The Opposing Marks covered either identical or similar goods in classes 29 and 30.

The Opposition Division and the Board of Appeal upheld Kraft's claims of likelihood of confusion, since all factors relevant to were present in both oppositions.  Both gave importance to the distinctive character of the earlier rights in the whole EU and the similarity of the signs.

Appeal

On appeal the General Court joined the cases (although then went on to give separate judgments).  Nutrexpa founded its appeals on three main arguments:

(1) the distinctive character of the earlier marks was low;

(2) the signs (the Opposing Marks and those the subject of Nutrexpa's applications) were different;

(3) there was no likelihood of confusion.

The assessment on the distinctiveness of the earlier rights involved looking at the meaning and understanding of the term 'ORO'.  In Italian and Spanish the term means 'gold'.  The General Court agreed with the Board of Appeal that only Italian and Spanish consumers could understand the word ORO as connoting a superior quality product.  No presumption of the understanding of the term was found in respect of other EU consumers, such as the Portuguese or French, in whose language the word 'oro' has a similar etymological form ('OURO' in Portuguese, 'OR' in French).  As a result only to Italian and Spanish consumers were the earlier marks' distinctiveness low and this was not the case for consumers elsewhere in the EU.

The General Court affirmed that the ORO marks could not be said to be scarcely distinctive.  Further the General Court held that the signs were visually and phonetically similar.

All the marks included the word ORO in upper case letters, with three-dimensional stylization which did not greatly differ.  The fact that Nutrexpa's mark also comprised the terms 'cuétara' and 'maria' was considered irrelevant on the basis that the term ORO was so dominant. Moreover, the General Court held that all EU consumers (excluding Italian and  Spanish consumers), while not understanding the term ORO, would pronounce all three word elements of Nutrexpa's mark so that the signs were also phonetically similar to certain extent. Italians and Spaniards might also identify Nutrexpa's mark by its ORO component.

As for the assessment of the signs' conceptual similarity, the General Court held that only Italian and Spanish consumers would understand the meaning of the ORO component, as the practice of the food industry as defining the superior, "golden" quality of the products distinguished by a certain mark. For other EU consumers it could not be presumed that a term in a foreign language could be understood and given the right meaning in that language.

The likelihood of confusion was therefore affirmed on the basis of the visual and phonetic similarity of the signs and the identity or similarity of the goods concerned. Indeed, the distinctive character of the earlier marks was only one of the factors to be taken into account in the global assessment of the likelihood of confusion.

Full of Case reports T-218/13 and T-271/13 are available by clicking on them.