An application for the mark FRUTELLA was filed in Class 31 for fruits, vegetables and grain products, among other things.
The owner of the NUTELLA EU trademark filed an opposition, which was dismissed by the Hungarian Intellectual Property Office (HIPO). HIPO held that there was no sufficient similarity that would lead to confusion between the two marks. The marks were both visually and conceptually different, although the products that they covered were similar.
The opponent filed for review before the Metropolitan Tribunal.
The Metropolitan Tribunal agreed with HIPO, holding that there was no similarity between the two marks that would result in confusion among consumers. The tribunal referred to the European Court of Justice (ECJ) Canon judgment (C-39/97) and its argument that the more distinctive the earlier mark, the greater the risk of confusion (a reference to the ECJ's earlier decision in Sabel).
The opponent's mark was known in relation to the specialty product hazelnut cream, which is incontestably reputed. Thus, while there was a real possibility that the FRUTELLA mark would be associated with the opponent's product, this was only in respect of hazelnut and hazelnut cream products.
As in Canon, there was a risk of confusion by way of association. As a result, with reference to Sections 4(1)(b) and 4(4) of the Trademark Act, the tribunal held that protection could not be granted to the FRUTELLA mark in Class 31 in respect of hazelnut and hazelnut cream products. As the NUTELLA mark's reputation related only to hazelnut cream, protection could be granted in respect of all other Class 31 products (3.Pk.23.092/2014).
The Metropolitan Tribunal's reference to the ECJ's pioneering Canon judgment is convincing. The Canon judgment discusses when a mark will most frequently be considered to have a highly distinctive character – namely, due to per se or market reputation.
The tribunal's decision to grant the opposition only in respect of hazelnut and hazelnut cream products is justified as the NUTELLA mark is not registered in Class 31 – even though it relates to hazelnut cream, which is covered by this class.
No appeal has been filed against the tribunal's decision, despite the fact that it is somewhat narrow. However, if the FRUTELLA mark were used in regards to nut cream, sweet almond cream or chocolate cream products, the owner of the NUTELLA mark could dispute this.
