Victory is sweet for Mars
Donna Trysburg isn’t surprised by this opposition outcome. B 3 068 345, Mars Incorporated v Star Trek Private Equity LLC, EUIPO, 4th December 2019
In this unsurprising decision, the Opposition Division (OD) found that use of the stylised mark MILKYWHEY (the contested mark), applied for in relation to “dietary and nutritional supplements” in class 5, would take unfair advantage of the distinctive character and repute of Mars’ earlier EU trade mark (EUTM) for MILKY WAY, registered and reputed for “chocolate bars” in class 30. Mars also invoked Article 8(1)(b) EUTMR, but Mars having succeeded under Article 8(5), the OD considered it unnecessary to examine whether there was also a likelihood of confusion.
Mars filed substantial evidence relating to at least eight EU Member States in support of its reputation. This included turnover figures for 2014 to 2018, including €148m of EU sales in 2018, press articles, references to independent market research and industry studies, and a witness statement confirming a first-use date in the UK in 1935 and detailing a MILKY WAY branded protein bar launched in 2017 which had achieved €900,000 in EU sales to date.
The best and most rounded evidence related to the UK. The OD, noting that reputation in a single Member State will suffice, held that the earlier mark had a reputation in the EU in relation to chocolate bars at the filing date of the contested mark.
Mars did not establish reputation for the wide-ranging class 29 and 30 goods claimed. The OD also observed that the evidence showed use of MILKY WAY for protein bars without establishing reputation for those goods, but this did not assist because they were not covered by Mars’ earlier mark.
The OD focused the comparison of signs on the English-speaking UK public. The signs were deemed visually highly similar and aurally identical but not conceptually similar, since MILKY WAY would be understood as the galaxy to which the solar system belongs, whereas MILKY in the contested mark would be understood as resembling milk in colour, and WHEY would be understood as a by-product of sour milk commonly used in dietetic substances such as protein powders.
The necessary link was established due to the signs’ similarity, the reputation in MILKY WAY, and because confectionary and protein bars can be in competition.
The OD agreed with Mars that the contested mark would exploit and take unfair advantage of the distinctive character and repute of MILKY WAY, citing the natural link which would be made by consumers, the long-standing and strong reputation in MILKY WAY, and the behaviour of the Applicant in applying to register a number of EUTMs evoking well-known brands, indicating a clear intention to influence consumer economic behaviour by creating an association between its dietary supplements and the names and flavours of well-known products.
As there was no due cause, the opposition was upheld for all contested goods. The decision was still open to appeal at time of writing. Had Mars registered MILKY WAY in relation to protein bars, it could potentially have avoided the costs of providing evidence of reputation throughout the EU. It is also interesting to see the marks considered conceptually dissimilar when one would expect most UK consumers to recognise the play on words that gives the marks at least one shared meaning.
- Remember to review existing goods and services coverage when launching a new product line, brand extension or co-branding projects under existing brands
- The evidence was unlikely to have proved sufficient to establish a reputation in the EU had the case been decided post-Brexit, due to heavy reliance on UK-based materials
- The EUIPO continues to take a hard line on marks it considers descriptive/non-distinctive and minimally stylised and can sometimes fail to appreciate nuanced or layered mark meanings
Trade Mark Attorney, Boult Wade Tennant LLP