Written by: Luka Jelčić
Intercontinental Great Brands LLC (part of the Mondelez group of companies) successfully protected the OREO brand as the Croatian Appeal Board decided that Koestlin’s Paris Nero Vanilla is confusingly similar with the famous OREO cookie.
This is an important decision as it shows the strength of the OREO trademark, as well as the device marks’ elements protected by Mondelez, i.e.: the cookie (in combination with milk), the blue background and the positioning of the OREO verbal trademark. As the Appeal Board will no longer be deciding in 2nd instance cases in Croatia (from 26 May 2018), this decision will prove to be very useful in future cases when comparing trademarks in class 30 of the International Classification of Goods and services.
OREO is a well-known brand of cookies which was first marketed in the United States back in 1912, and the first trademark for it was registered in 1913. Mondelez group owns several key EUTMs which protect the get up of the actual cookie as well as the packaging:
All of the aforementioned trademarks are registered for cookies and other goods in class 30 of the International Classification of Goods and Services.
Koestlin d.d., a local Croatian company focused primarily on confectionery goods, filed a trademark application for cookies in class 30, for the following mark:
The text on the cookie box states “PARIS NERO VANILLA”.
Mondelez filed a timely opposition to prevent trademark registration, which was unsuccessful in the first instance (Croatian State Intellectual Property Office). Mondelez subsequently filed an Appeal to this decision (with suspensory effect), and the Appeal Board accepted the Appeal in its entirety, overturning the 1st instance decision.
The Appeal Board has concluded that:
- Dominant verbal elements of the EUTM 008747347 and the opposed mark were: OREO, PARIS and NERO.
- The word NERO (meaning black in Italian) was deemed as descriptive,
- Use of white color was deemed as highly impactful; The EUTM 008747347 and the opposed trademark application both contained a round black cookie on the right side and the following elements had contributed to their visual similarity
- Blue background and its shades
- Dominant element being the white color
- Positioning of the verbal element
- Descriptive elements – Chocolate Flavored Sandwich Biscuit in EUTM 008747347 and Vanilla Flavored Sandwich Biscuit in the opposed trademark application
- Positioning of the descriptive element
- Representation of a round black cookie (with 2 poles), with stylized surface, and white filling (part missing in the opposed trademark application)
- Positioning of the cookie – in lower right corner
- Milk – earlier trademark has scattered milk, while the opposed trademark application has a stream of milk
Consequently, the Appeal Board concluded there was a visual similarity between marks, and that the visual similarity between marks was the most important.
As for the conceptual similarity, the Appeal Board concluded there was a certain similarity between the marks due to the descriptive elements, cookie element, as well as the milk representation.
Finally, the Appeal Board has concluded that the marks were similar and there was a likelihood of confusion.