Dienstag, 25. September 2007

ECJ: One more chance for Nestlé's QUICKY bunny

ECJ reverses the CFI's decision to deny Nestlé's QUICKY bunny registration on relative grounds - but nothing is decided yet.

In its judgment of 20 september 2007, the ECJ overturned the CFI's decision of 22 february 2006 to dismiss Nestlé's appeal against the OHIM's refusal to register its QUICKY word/device mark on the grounds of earlier rights.

The applicant, Nestlé S.A., the notorious Swiss food giant, applied for the registration of its QUICKY word/device mark (CTM application # 000467746), depicted on the left, on 6 February 1997, i.e. shortly after the OHIM had become operational. The mark shows the fairly well-known cartoon bunny usually found on the packaging of Nesquik instant chocolate powder, with a capital N around its neck and together with its name QUICKY printed underneath.

Quick restaurants SA, a Belgian maker of burgers and French fries (they should really be referred to as Belgian fries - cui honorem, honorem), opposed the application on the basis of its earlier national and/or international QUICKIES (word) and QUICK (word and word/device, see below) marks, registered, among other things, in France and the Benelux, where they are widely used and may even be well-known.

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Since the marks were registered respectively claimed for more or less the same goods in classes 29, 30 and 32, the legal issues of the case basically boil down to two questions:

  1. Does QUICKIES or QUICK have normal distinctiveness, given that the meaning of the word quick in English may well be considered descriptive for fast food?

  2. Does the fact that the application is for a word/device mark featuring the Nesquik bunny - rather than just a word mark - rule out similarity and thus likelihood of confusion?
The ECJ reversed the CFI's decision because the latter had failed to assess the trademarks globally, and had omitted the device portion in its assessment of the likelihood of confusion since it had considered it not to be sufficiently dominant to be taken into account. On substance, this is not really a breathtaking case. But some aspects make it still worth reading:

First, the French still seem to be having some difficulties in pronouncing words derived or taken from foreign languages, in particular the English language. One of the most discussed arguments through the instances was whether the French would omit the final "-s" in pronouncing "Quickies", as they do, for instance, in saloperies, maladies or épidémies, i.e. in other words likely to be used in the context of le fast food (and more particularly in their plural).

Second, it is noteworthy that only two out of a total of seven arguments on which the appeal was based were even considered at all by the Court of Justice (at least, one of them was sufficient to have the judgment reversed); the remaining five were rejected on the grounds that they either aimed at attacking the factual, rather than the legal, findings of the CFI, or that the appellant was precluded from raising these arguments at this stage. This leads to the question of why the findings on the facts had not been attacked earlier (the CFI's findings reflected those already summarized in OHIM's decisions), and why Nestlé failed to file crucial legal arguments (e.g. the objection of non-use in accordance with Art. 43 (2) of the Regulation in relation to the QUICKIES mark) in time, i.e. in the proceedings before OHIM and the CFI - and why it undertook to invoke them before the ECJ, where they were duly rejected (para. 70 of the decision).

Third, it took ten years for Nestlé to bring this case before the ECJ - which means that Nestlé had to either wait for that period of time before it started using the mark, or accept the risk of infringing Quick SA's marks through the use of the mark on such an important product as the Nesquik instant chocolate drink. And a final decision has yet to be pronounced.

Fourth, and most interestingly, Nestlé seems to have a very particular concept of trademarks. In the proceedings before the ECJ (and the CFI), Nestlé seems to have made very peculiar statements. As quoted in para. 69 of the judgment, Nestlé apparently invoked that the CFI had not considered that
"(69) ...the mark applied for is not a "product" mark, that there is a well-known umbrella mark, NESQUICK (sic! - although the only mark for which I would find any use seems to be NESQUIK, see below), that the rabbit QUICKY is a character, and that the distribution channels used by the claimant are classical channels in the agriculture and food sectors."
This is the original wording:

"(69) Ainsi, le Tribunal n’aurait pas pris en compte le fait que la marque
demandée n’est pas une marque «produit», qu’il existe une marque ombrelle notoire, NESQUICK (sic!), que le lapin Quicky est un personnage et que le réseau de distribution de la requérante est un réseau classique dans l’agro‑alimentaire."

It is hard to gauge, what the exact meaning of this is - but it seems to say that, since QUICKY the rabbit is a character (whatever that category shall mean in trademark law) and not a trademark intended to distinguish products from other products, there could be no likelihood of confusion.

I am not sure I understand this, but maybe someone can explain to me why Nestlé did file for the registration of its QUICKY & rabbit device mark in the first place (and took the case right to the ECJ in a ten-year-fight) if it was never to be used as a trademark?. And the fact that QUICKY is a "character" shall apparently, in Nestlé's view, serve as proof for this daring theory. Interestingly, Nestlé has in the meantime filed for and obtained a registration for its rabbit without the QUICKY word portion (CTM 003338688, pictured left). In line with Nestlé's own arguments, this device should be vulnerable to cancellation, because - in Nestlé's own words - it is not being used to distinguish goods from those of competitors.

Stranger still, Nestlé seems to argue that since there is an umbrella mark (NESQUI/C/K - again, can anyone please help me - where is it exactly in Nestlé's trademark application?), there could be no likelihood of confusion?

It looks to me as if Nestlé could do with some sound legal advice...

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