FAIRWILD FOUNDATION VERSUS THE OHIM

 

General Court of the European Union, 7 March 2013:

  • Parties: FairWild Foundation versus the OHIM and Rudolf Wild GmbH & Co. KG
  • Subject: Independent distinctive role
  • Trade marks: FAIRWILD/WILD

 

FairWild Foundation filed an international trade mark application for “FAIRWILD", designating the European Union, for food and consumer goods in Classes 3, 5, 29 and 30.

 

Rudolf Wild GmbH & Co filed an opposition on the ground of its prior Community trade mark "WILD", covering goods in Classes 3, 5, 29, 30 and 32.  

 

Further to the decision of the Opposition Division that partially upheld the opposition filed by Rudolf Wild GmbH & Co, FairWild Foundation filed an appeal before the First Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM).

 

The OHIM's Board of Appeal held that the goods and signs at issue are similar and that the likelihood of confusion therefore existed, supported in particular by the average distinctive character of the earlier trade mark. The term "WILD" has no meaning for those who do not speak German or English, and, for English and German speakers, the meaning of the term "WILD" is not descriptive in relation to the goods covered by the earlier trade mark. Furthermore, the additional element "FAIR" is used widely throughout the Union and cannot be considered dominant in association with the element "WILD". The likelihood of confusion therefore exists.

 

FairWild then appealed to the General Court of the European Union, arguing that, because the "WILD" element is not dominant in the international trade mark, there was no likelihood of confusion.

 

The General Court of the European Union rejected the appeal and confirmed the decision of the Board of Appeal, finding that for food and consumer goods, the earlier trade mark "WILD" has average distinctiveness. In the subsequent verbal trade mark "FAIRWILD", the element "wild remains clearly perceptible as such”.

As the FAIRWILD sign has no meaning and does not constitute a logical whole with which the WILD element merges, WILD occupies an independent distinctive position within FAIRWILD.

The General Court stated that when a trade mark is composed exclusively of the earlier trade mark to which is added another word, there is an indication of similarity between the two. For identical or similar goods, this creates a likelihood of confusion.

 

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