Chocolate and sweets manufacturer Ferrero SpA ("Ferrero") has been successful in its attempt to invalidate a Community design registration owned by BMB sp. z.o.o ("BMB") for a confectionery container. (BMB sp.z o.o v EUIPO (Case T-695/15, 3 October 2017.)
Ferrero applied to invalidate BMB's registration on the basis that the container design was confusingly similar to an earlier shape mark which was protected in France in relation to sweets (under Article 25(1)(e) of the Community Design Regulation (6/2002/EC)). As a result, Ferrero claimed that there was a likelihood of confusion between its shape mark and BMB's container, and that the contested registration was therefore invalid. The design and shape mark in question are shown below:
Ferrero was successful before the EUIPO Cancellation Division and the Board of Appeal. In both instances, a likelihood of confusion was found due to the similarity between BMB's design and Ferrero's mark, and the conflict of goods.
BMB appealed to the EU General Court, however the result was no different. The General Court found that, although Ferrero's mark has weak distinctive character, there was still a close visual similarity with BMB's design. Based on that assessment, and its view that a phonetic and conceptual comparison was not possible, the General Court held that the design and shape mark are similar overall. Coupled with the close similarity of goods, the General Court agreed with the Board of Appeal that there was a likelihood of confusion. BMB's appeal was therefore rejected and so the earlier decision to invalidate the contested design registration stands. It remains to be seen whether BMB will contest the General Court's decision.
This case serves as a reminder of the relationship between trade mark and design rights, and illustrates how trade mark owners can challenge the validity of design registrations if they feel there is a likelihood of confusion.