• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees‘ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Eva Maria Amoah
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

ONE vs. figurative mark THE ONLY ONE: CFI ruled against Nestlé

6. January 2020

When an earlier mark, which is also very well known, is fully integrated into a new mark, this is a stronger indication of likelihood of confusion – possibly even maliciously. However, Nestle lost before the CFI just before Christmas with its word mark ONE against the figurative mark THE ONLY ONE.

Figurative Mark THE ONLY ONEIn September 2016, the intervener, Société des Produits Nestlé S.A (Switzerland), filed an opposition against registration of the Union figurative mark THE ONLY ONE by alphaspirit wild and perfect, which had been applied for in April 2016 by the applicant Amigüitos pets & life, SA (Spain).
Nestlé based the opposition on the likelihood of confusion with its own earlier registered word mark ONE and also claimed the special protection of the earlier well-known mark and its reputation under Article 8(5) of EU Regulation No 2017/1001.

The Opposition Division and also the Board of Appeal of the European Trade Mark Office (EUIPO) upheld Nestlé’s decision and rejected the disputed trade mark application. The trade mark applicant challenged this decision before the European Court  (European Court of First Instance, CFI). Just before Christmas the case was decided (EU:T:2019:890).

ONE no dominant element in Unionmark THE ONLY ONE

Contrary to the Board of Appeal’s assessment, the CFI did not consider the word element ONE in the mark in dispute “THE ONLY ONE by alphaspirit wild and perfect” to be a dominant element. Both the figurative elements and the seven word elements contribute to the fact that ONE is not dominant in the overall impression. The Court of First Instance pointed out that a component of a composite sign does not retain such an independent distinctive role if, together with the other component or components of the sign, it forms a unit which has a meaning different from that which those components have in themselves (see judgment of 8 May 2014, Bimbo v OHIM, EU:C:2014:305). Although the element ‘the only one’ occupies an important part of the black square, the visual impression of the mark applied for is determined by seven words which are not negligible, the CFI held.

For that reason, the two marks are visually different. Furthermore, the degree of phonetic similarity between the marks at issue must be regarded as low.

Proof of the earlier well-known mark ONE

The decisive factor in this case, however, was proof of the earlier well-known mark ONE. In the present case, in order to establish that the particular reputation of the earlier mark had been proved, the Board of Appeal relied both on press articles concerning the mark PURINA ONE, on information on the development of that mark and on screenshots from the websites, and on the affidavit of the Marketing Director of Nestlé, which provided information on the marketing, distribution and market shares of the mark ONE and on the registrations of the marks PURINA ONE and ONE.

Contrary to the submissions of EUIPO and the intervener, the evidence submitted proved the reputation of the mark PURINA ONE and not that of the earlier mark ONE, the CFI found.

Admittedly, the proprietor of a registered trade mark may, in order to prove the reputation of that mark, rely on evidence of its reputation under another form, in particular under the form of another registered trademark, provided that the relevant public continues to perceive the goods in question as originating from the same undertaking.

In this context, please read also:

  • Free rider: Adidas successfully defends its 3-Striped Shoe
  • Genuine use of the trade mark – with slightly different trade mark representation
  • Genuine use of the mark in an abbreviated form

In the present case, however, the Board of Appeal of the EUIPO, in determining the reputation of the earlier mark, relied essentially on the evidence relating to the mark PURINA ONE and did not raise the question whether or not that reputation could be established on the basis of a mark represented in another form.

Accordingly, the European Court granted in its entirety the action brought by the applicant Amigüitos pets & life and annulled the contested decision. Nestle lost with its word mark ONE against the Union figurative mark THE ONLY ONE by alphaspirit wild and perfect.

Would you also like to defend your trademark or your brand name?

Our lawyers have many years of expertise in trademark law as well as in all aspects of intellectual property and are entitled to represent you in any court – in Germany and internationally.
Please contact us if you are interested.


 

Source for text and image:

Judgment of the CFI of 19 December 2019, EU:T:2019:890

 

  • share  
  • share 
  • share 
  • tweet  
  • share 

Category iconTrademark Law Tag iconCJEU,  word mark,  CFI,  likelihood of confusion,  Nestle,  Union figurative mark,  similarity,  figurative mark,  proof of reputation,  dominant element,  THE ONLY ONE,  ONE,  reputation of the earlier mark,  Nestlé mark ONE,  proof of the earlier well-known mark ONE

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: Trademark Law

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law
This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Recent Posts

  • Alkemie vs. Alkmene: word/figurative mark vs. earlier word mark 9. April 2021
  • Hitachi patent partially invalid in GER: code distribution for mobile communication 8. April 2021
  • Google vs. Oracle: Java API code falls under fair use! 6. April 2021
  • EuGH / Case Lundbeck: Restriction by object 29. March 2021

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

9. April 2021
Alkemie vs. Alkmene: word/figurative mark vs. earlier word mark

Alkemie vs. Alkmene: word/figurative mark vs. earlier word mark

26. March 2021
Colour mark: systematic arrangement of colours decisive

Colour mark: systematic arrangement of colours decisive

25. March 2021
Cyprus unsuccessful against mark Halloumi from Greece

Cyprus unsuccessful against mark Halloumi from Greece

19. March 2021
THE TIME vs. TIMEHOUSE: no counteraction theory

THE TIME vs. TIMEHOUSE: no counteraction theory

12. March 2021
Kerrygold vs. Kerrymaid: likelihood of confusion

Kerrygold vs. Kerrymaid: likelihood of confusion

12. March 2021
Puma vs. Puma system: TM registration for remote goods

Puma vs. Puma system: TM registration for remote goods

Footer

Contact

Franklinstr. 61-63
D-60486 Frankfurt am Main
Germany

+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Customer Reviews

Meyer-Dulheuer MD Legal Patentanwälte PartG mbB Patentrecht, Markenrecht, Eigentum hat 4,78 von 5 Sternen 23 Bewertungen auf ProvenExpert.com

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Info secure emails
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • Google+
  • LinkedIn
  • xing
  • Email

Newsletter Signup

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form