CELEX: 62008TJ0140
Community trade mark
Invalidity proceedings
Community figurative trade mark TiMi KiNDERJOGHURT
Earlier word mark KINDER
Relative ground for refusal
Lack of similarity of the signs
Earlier opposition proceedings
Absence of res judicata
Article 8(1)(b), Article 8(5) and Article 52(1)(a) of Regulation (EC) No 40/94 [now Article 8(1)(b), Article 8(5) and Article 53(1)(a) of Regulation (EC) No 207/2009]

Background to the dispute
On 8 April 1998 Tirol Milch reg.Gen.mbH Innsbruck filed an application for registration of a Community trade mark at the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM), under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (
OJ 1994 L 11, p. 1
), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (
OJ 2009 L 78, p. 1
)).
The mark for which the application for registration was made is the following figurative sign:
The goods for which registration was sought fall within Class 29 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and consist of the following:
‘Yoghurt, fruit yoghurt, yoghurt drinks, yoghurt drinks containing fruit; semi-prepared and ready-to-serve meals based mainly on yoghurt or yoghurt products; yoghurt creams.’
On 14 January 1999 the applicant, Ferrero SpA, filed a notice of opposition to registration of the trade mark applied for in respect of all of the goods covered by the mark on the basis of its earlier word mark KINDER, registered in Italy since 28 January 1965 under number 168843, and after renewal under number 684985, for goods in Class 30, namely ‘coffee, tea, sugar, rice, tapioca, sago, coffee substitutes; bread, biscuits, cakes, pastry and confectionery, edible ice-creams; honey, treacle, yeast and baking powders; salt, mustard; pepper, vinegar, sauces, spices; edible ice; cocoa, cocoa products, namely cocoa paste for cocoa drinks, chocolate paste, coverings, namely chocolate coverings, chocolate, pralines, decorations for Christmas trees made of chocolate, goods made of an edible chocolate case with an alcoholic filling, sugar articles, confectionery, including fine and hard pastry’.
By decision of 29 September 2000 the Opposition Division rejected the opposition on the basis of Article 8(1)(b) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(b) and Article 8(5) of Regulation No 207/2009).
On 3 November 2003 that decision was subsequently upheld by the Fourth Board of Appeal in Case R 1147/2000-4.
Following rejection of the opposition, the trade mark was published in
Community Trade Marks Bulletin
No 42/2004 of 11 October 2004.
On 19 August 2005 the applicant filed an application under Article 52(1)(a) of Regulation No 40/94 (now Article 53(1)(a) of Regulation No 207/2009) for a declaration that registration of that Community trade mark was invalid. That application related to all of the goods covered by the Community trade mark.
In support of its application for a declaration of invalidity, the applicant relied, under Article 8(1)(b) and Article 8(5) of Regulation No 40/94, to which Article 52(1)(a) of that regulation refers, on the Italian registration referred to in paragraph 4 above and on 35 other earlier marks: Italian, French, Spanish and international, listed in paragraph 5 of the application initiating these proceedings, all containing the word ‘kinder’ together with an additional word and/or figurative elements.
By decision of 14 March 2007 the Cancellation Division declared the Community trade mark TiMi KINDERJOGHURT invalid pursuant to Article 8(5) of Regulation No 40/94.
On 4 May 2007 Tirol Milch reg.Gen.mbH Innsbruck filed with OHIM, under Article 59 of Regulation No 40/94 (now Article 60 of Regulation No 207/2009), an appeal against the Cancellation Division’s decision.
On 30 January 2008 that appeal was upheld by a decision of the Second Board of Appeal (‘the contested decision’). The Board of Appeal annulled the decision of the Cancellation Division and dismissed the application for a declaration of invalidity.
The Board of Appeal held, in essence, that, first, although decisions in opposition proceedings do not in law have the force of
res judicata
, the Cancellation Division remained bound by the substantive findings and conclusions of the earlier decisions of OHIM by virtue of the principle
nemo potest venire contra factum proprium
, which means that the administration is bound by its own acts, particularly when those acts have enabled parties to the proceedings legitimately to acquire rights to a registered trade mark. Next, the Board of Appeal upheld the findings of the Opposition Division’s decision and the decision of the Fourth Board of Appeal of 3 November 2003, to the effect that the marks were, overall, dissimilar, taking account of the fact that, visually and phonetically, the marks are substantially dissimilar. Lastly, the Board dismissed the request for a declaration of invalidity on the ground that a condition for the application of Article 8(1)(b) and of Article 8(5) of Regulation No 40/94, namely that the signs be identical or similar, was not satisfied.
Forms of order sought by the parties
The applicant claims that the Court should:
—
annul the contested decision;
—
order OHIM to pay the costs.
OHIM contends that the Court should:
—
primarily, dismiss the action in its entirety;
—
order the applicant to pay the costs;
—
alternatively, if the Court considers that the signs are not dissimilar, either decide on Article 8(5) of Regulation No 40/94 if the Court considers that it has sufficient information, or refer the case back to OHIM for further action;
—
in the latter case, order OHIM to bear only its own costs.
Substance
In support of its action, the applicant relies on two pleas in law alleging, first, an incorrect application of the principle of
res judicata
, and secondly, infringement of Article 8(1)(b) and Article 8(5) of Regulation No 40/94.
The first plea in law, alleging an incorrect application of the principle of res judicata
Arguments of the parties
In this plea in law, the applicant claims that the Board of Appeal contradicted itself by asserting, on the one hand, that decisions in opposition proceedings lack the negative effect of
res judicata
since they do not bar the admissibility of a subsequent invalidity action, while asserting, on the other hand, that such decisions cannot be entirely ignored when deciding a subsequent invalidity action having the same parties, the same subject-matter and the same grounds. Decisions in opposition proceedings have no binding effect on a subsequent action for a declaration of invalidity. The applicant puts forward, in that regard, the following four reasons.
First, the applicant claims that the new facts and additional evidence produced before the Cancellation Division, in particular those establishing the reputation of the KINDER mark and the family of KINDER marks, were sufficient to alter to a great extent the subject-matter of the dispute, and consequently the conclusions reached in the opposition proceedings decision ceased to be relevant.
Second, the distinction applied by the Board of Appeal in the contested decision between the ‘positive effect’ and the ‘negative effect’ of
res judicata
is invented and without any basis in law. Either a decision has the force of
res judicata
, or it does not.
Third, the rule
nemo potest venire contra factum proprium
referred to in the contested decision is unknown in administrative proceedings.
Fourth, rejection of an opposition and the subsequent registration of a Community trade mark cannot give rise to any legal certainty or legitimate expectation on the part of the proprietor of a trade mark since the legislation affords the opportunity to challenge the registration subsequently by means of an application for a declaration of invalidity or by means of a counterclaim in the event of an infringement case.
The applicant concludes on the basis of those arguments that the contested decision must be set aside.
OHIM states, first, that it agrees with the statement made in the contested decision and in the application initiating these proceedings that, when the factual basis of the dispute has been materially altered, the Cancellation Division is not bound by the outcome of the opposition proceedings since it is then called upon to decide on a new case.
Next, OHIM contends that, as regards cases which are factually and legally identical, an important distinction must be made between, on the one hand, the need for an administrative body dealing with the registration of trade marks to strive for consistency by applying the same legal principles to each case and by taking account, so far as is possible, of precedents in identical or similar cases and, on the other, the alleged obligation on that body to reach the same conclusion as in a previous case, due to the legally binding character of the earlier decision taken by that body or by a higher administrative or judicial authority.
In that regard, OHIM contends that the need to strive for consistency, which is reflected in the adoption of internal guidelines, practice notes or quality checks which may be more or less binding, is limited, in accordance with the case-law, by the principle of legality. It follows that an authority cannot be bound by an earlier decision which is vitiated by error. In particular, given that the decisions concerning registration of a sign as a Community trade mark which OHIM is called upon to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion, the legality of its decisions must be assessed solely on the basis of Regulation No 40/94, as interpreted by the Community judicature, and not on the basis of the previous decision-making practice of either OHIM or its Boards of Appeal.
Consequently, and irrespective of whether the rule
nemo potest venire contra factum proprium
is applicable, OHIM contends that that rule cannot be interpreted in the present case as meaning that the Cancellation Division was bound by the earlier decisions of the Opposition Division or of the Board of Appeal delivered in the same case.
Furthermore, according to OHIM, that interpretation is consistent with an
a contrario
reading of Article 62(2) of Regulation No 40/94 (now article 64(2) of Regulation No 207/2009), according to which the
ratio decidendi
of decisions of Boards of Appeal binds only the ‘first instance’, when the case is remitted back to the department which adopted the contested decision and in so far as the facts at issue remain the same.
Further, OHIM accepts the applicant’s argument that the rejection of an opposition and the consequent registration of a Community trade mark cannot give rise to any legitimate expectations.
It follows from the foregoing that the Board of Appeal did err in law by concluding that the Cancellation Division was bound by the earlier decision of the Opposition Division.
However, according to OHIM, before the contested decision can be annulled the Court must determine whether the Board of Appeal correctly ruled on the merits of the case. Consequently, for the purposes of the present proceedings, the correctness of the contested decision should be assessed with reference to the Board of Appeal’s analysis of the similarity of the signs in the context of Article (8)(1)(b) and Article 8(5) of Regulation No 40/94.
Findings of the Court
In relation to this plea in law, it is necessary to consider the relevance to invalidity proceedings before OHIM of assessments made and conclusions reached by a Board of Appeal in an earlier decision in opposition proceedings involving the same parties and the same Community trade mark.
In that regard, it must be observed at the outset that, whatever view is taken of that question, the Board of Appeal carried out, in paragraphs 32 to 46 of the contested decision, an independent and comprehensive examination of the substance of the dispute, and in particular of the similarity of the signs at issue, which is the subject of the applicant’s second plea in law.
In those circumstances, it must be concluded that, notwithstanding the statements made in paragraph 30 of the contested decision, the Board of Appeal did not in the present case apply the principle of
res judicata
. Consequently, the first plea in law rests on a mistaken premise and must, accordingly, be rejected.
However, before consideration of the second plea in law, it must none the less be stated that the Board of Appeal was correct to argue in paragraphs 17 to 29 of the contested decision that the principle of
res judicata
, which prohibits a final judicial decision being called into question, was not applicable so far as concerns the relationship between a final decision in opposition proceedings and an application for a declaration of invalidity, given, inter alia, first, that proceedings before OHIM are administrative and not judicial and, second, that the relevant provisions of Regulation No 40/94, namely Article 52(4) and Article 96(2) (now Article 53(4) and Article 100(2) of Regulation No 207/2009) lay down no rule to that effect.
The Board of Appeal was also correct to observe in paragraph 30 of the contested decision that the findings made in the final opposition proceedings decision could not be entirely ignored when deciding an invalidity action having the same parties, the same subject matter and the same grounds, provided that those findings or decided issues are not affected by new facts, new evidence or new grounds. That assertion is no more than a specific expression of the case-law according to which the previous decisions of OHIM are a factor which may be taken into consideration in assessing whether a sign is suitable for registration (see, to that effect, Case T-304/06
Reber
v
OHIM
—
Chocoladefabriken Lindt & Sprüngli
(
Mozart
) [2008] ECR II-1927, paragraphs 45 and 53).
On the other hand, the Board of Appeal was wrong to hold, in paragraph 30 of the contested decision, that, in invalidity proceedings, the departments of OHIM were bound by findings made in a final decision handed down in opposition proceedings, according to the rule
nemo potest venire contra factum proprium
, the protection of acquired rights, and the principles of legal certainty and the protection of legitimate expectations. First, since no force of
res judicata
attaches to a decision, even when final, handed down in opposition proceedings, that decision is incapable of creating either acquired rights or a legitimate expectation as to the result of a subsequent action for a declaration of invalidity. Second, if the arguments of the Board of Appeal on that point were accepted, any action for a declaration of invalidity challenging the registration of a Community trade mark on which a decision had been made in opposition proceedings would, where the parties to the dispute were the same, the subject matter was the same and the grounds were the same, be deprived of any practical effect, although such a challenge is permitted under Regulation No 40/94, as is clear from the considerations set out above.
Therefore, the Board of Appeal erred in concluding that findings made in a final decision in opposition proceedings are binding in subsequent invalidity proceedings.
The second plea in law, alleging an infringement of Article 8(1)(b) and Article 8(5) of Regulation No 40/94
Arguments of the parties
In this plea in law, in the first place, the applicant considers that the reputation of its various earlier marks was not properly taken into account by the Board of Appeal.
In that regard the applicant states that, in the context of Article 8(5) of Regulation No 40/94, reputation and distinctiveness play a ‘crucial role’, and, moreover, in the context of Article 8(1)(b) of that regulation, they are the key factors to determine whether or not there is a likelihood of confusion.
Next, notwithstanding the fact that, in paragraph 35 of the contested decision, the Board of Appeal upheld the decision of the Cancellation Division as regards the high degree of reputation of the earlier mark, the Board of Appeal then failed to take into consideration that reputation when assessing the distinctiveness of the earlier mark and comparing it to the challenged mark.
Furthermore, by concluding in paragraph 35 of the contested decision, when assessing the evidence for the notoriety of the earlier mark, that surveys also showed that the word ‘kinder’ was spontaneously associated with KINDER confectionery products, the Board of Appeal unduly limited the range of products in connection with which the trade mark KINDER enjoys a reputation. A proper appraisal should have led to the conclusion that the trade mark KINDER is not only associated with confectionery, but also with chocolate, chocolate eggs, snacks (including milk-based snacks) and chocolate bars.
Lastly, contrary to what was stated by the Board of Appeal, the reputation of a trade mark must be taken into account when assessing the similarity between two signs. In that regard, the applicant refers to the case-law according to which marks with a highly distinctive character, either per se, or because of their reputation on the market, enjoy broader protection than those with a less distinctive character. Although that case-law relates to cases of similarity under Article 8(1)(b) of Regulation No 40/94, none the less, reputation, as a factor relevant to the circumstances of the case, must also be taken into consideration when assessing the similarity between two signs in the context of Article 8(5) of that regulation. The applicant claims, in that regard, that the existence of a link between the extent of the reputation and the similarity of the marks has been recognised by the former Benelux trade mark law, to the effect that the stronger a mark is or the greater its reputation, the easier it will be to accept that there is an association or similarity.
In the second place, even if the goods covered by the challenged mark and those covered by the earlier marks are not identical and do not fall within the same class, none the less the goods at issue are highly similar. Given that the consumer’s perception is that products of the family of marks comprising the word ‘kinder’ are strongly associated with milk and with milk products in general, use of the sign TiMi KiNDERJOGHURT in connection with yoghurt based products is likely to create, in the consumer’s perception, a strong association between products belonging to that family of marks and products covered by the challenged mark.
In the third place, the applicant is also critical of the fact that, in the contested decision, the Board of Appeal failed to take into consideration the fact that the applicant is the owner of a large family of trade marks which comprise or consist of the word ‘kinder’ accompanied by distinctive or descriptive words or devices.
The existence of a single series or family of trade marks constitutes a relevant factor for the purpose of assessing whether or not there is a likelihood of confusion. A likelihood of confusion may be created by the possibility of association between the challenged mark and the earlier marks in the series, where the challenged mark displays such similarities to the latter as might lead consumers to believe that it forms part of the same series and, therefore, that the goods covered by it have the same commercial origin as those covered by the earlier mark, or a related origin. Such a likelihood may exist even when, as in the present case, the comparison between the challenged mark and the earlier marks, each taken individually, does not prove the existence of a direct likelihood of confusion.
In the present case, given that it has never been disputed, by either Tirol Milch reg.Gen.mbH Innsbruck or by the Board of Appeal, that the word ‘kinder’ constitutes the core element of a family of marks and that all the marks included in this family are extensively used on the market and are perceived by consumers as a family of marks, it is obvious that the challenged mark will be immediately perceived as another mark in the family or series, because it also contains the word ‘kinder’. Accordingly, the likelihood of confusion, including the risk of association under Article 8(1)(b) of Regulation No 40/94, becomes a certainty.
In the fourth place, the applicant considers that the assessment made by the Board of Appeal in paragraphs 36 to 44 of the contested decision to the effect that the two signs are not similar is inconsistent and erroneous. In that regard, the applicant puts forward the following three reasons.
First, the Board of Appeal did not take into account the case-law that the degree of similarity for the comparison of the signs under Article 8(5) of Regulation No 40/94 is not the same as that required by Article 8(1)(b) of that regulation. Unlike the latter provision, the former does not require that the similarity of the signs be such that it causes a likelihood of confusion.
Second, instead of basing the assessment of the similarity of the signs on the overall impression given by them, the Board of Appeal made its assessment following an ‘analytical dissection’ of the challenged mark.
Third, the Board of Appeal’s finding that the word ‘timi’ is the dominant element of the challenged mark is clearly erroneous. That word is (i) printed in white on a darker background, making it ‘less immediately readable’ than if it was printed in black on a white background and (ii) its size is no more than a fraction of the overall trade mark. On the contrary, it is the word ‘kinder’ which is the dominant element of the mark as (i) the word ‘kinderjoghurt’ is printed in black and occupies much more space than the word ‘timi’ and (ii) the word ‘joghurt’ as a descriptive word should be regarded as either a negligible element, or as actually increasing the similarity with the KINDER family of marks. Further, the Board of Appeal’s finding in paragraph 41 of the contested decision, that the word ‘kinder’ does not stand out or appear as an independent element, and is attached to the word ‘joghurt’, is also misconceived. According to the case-law, the fact that a distinctive word is attached to a descriptive word does not negate the similarity of the distinctive element. Lastly, even if the word ‘timi’ were also relevant, the Board of Appeal could not have completely omitted the word ‘kinder’ from the comparison of the two signs. The applicant states, in that regard, that, in a particular case, an earlier mark used by a third party in a composite sign including the name of the third party’s company, still has an independent distinctive role in the composite sign, without necessarily being its dominant element. In such a case, the overall impression produced by the composite sign may lead the public to believe that the goods or services at issue derive, at the very least, from companies which are linked economically, in which case a likelihood of confusion must be held to be established.
The applicant concludes from the foregoing (i) that the damage to the distinctive character and the repute of the word mark KINDER is highly likely to be detrimental within the meaning of Article 8(5) of Regulation No 40/94, (ii) that Tirol Milch reg.Gen.mbH Innsbruck is taking unfair advantage of that distinctive character and of that repute and, (iii) that there is also a high likelihood of confusion within the meaning of Article 8(1)(b) of the same regulation, in view of the similarity of the marks and the goods and taking into account the reputation of the KINDER mark and of the applicant’s family of marks.
OHIM does not accept the applicant’s arguments.
Findings of the Court
It must be observed, at the outset, that the existence of a similarity between the earlier mark and the challenged mark is a precondition of both Article 8(1)(b) and Article 8(5) of Regulation No 40/94, to which Article 52(1)(a) of the same regulation refers. As regards the assessment of that condition, it is clear from the case-law relating to the interpretation of Article 5(2) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (
OJ 1989 L 40, p. 1
), the legislative content of which is, essentially, identical to that of Article 8(5) of Regulation No 40/94, that that condition requires the existence, in particular, of elements of visual, aural or conceptual similarity (see Case
C-408/01
Adidas-Salomon and Adidas Benelux
[2003] ECR I-12537
, paragraph 28, and case-law there cited).
Further, it is also clear from the Court’s case-law relating to the interpretation of Article 5(2) of Directive 89/104 that, to satisfy the condition of similarity, it is not necessary to prove that there exists, on the part of the relevant section of the public, a likelihood of confusion between the earlier mark with a reputation and the challenged mark. It is sufficient for the degree of similarity between those marks to have the effect that the relevant section of the public establishes a link between them. The existence of such a link must be appreciated globally, taking into account all factors relevant to the circumstances of the case. In relation to the visual, aural and conceptual similarities of the marks at issue, the comparison of the signs must be based on the overall impression produced by the marks, taking account, inter alia, of the distinctive and dominant elements of those marks (see, by analogy, Case
T-181/05
Citigroup and Citibank
v
OHIM
—
Citi (CITI)
[2008] ECR II-669
, paragraphs 64 and 65, and case-law there cited).
In the present case, notwithstanding that the word ‘kinder’ is present in both signs, there are, as the Board of Appeal correctly pointed out in paragraph 42 of the contested decision, a number of visual and phonetic features which preclude the signs being perceived as being similar.
First, the word ‘kinder’ is merged with the word ‘joghurt’, which means that they have no specific, independent existence. Not only do the words ‘kinder’ and ‘joghurt’ have the same visual significance, but the stylised unevenness of the dancing, undulating font used for the word ‘kinderjoghurt’ turns them into a harmonious unit in which the two constituent words have become barely perceptible. Those special features show that, contrary to what is claimed by the applicant, the word ‘kinder’ is not merely attached to the word ‘joghurt’. Moreover, because of the stylised font used for the word ‘kinder’ in the challenged mark, that mark is not visually similar to the earlier word mark on which the invalidity action is based, for which a standard font is used.
Secondly, it is clear that the word ‘kinder’ in the challenged mark is merely part of the word ‘kinderjoghurt’, which is of only secondary importance as compared with the word ‘timi’. In that regard, the Court must reject the applicant’s arguments which seek to show that the word ‘timi’ is not the dominant element because of its smallness and because it is allegedly less legible than the word ‘kinderjoghurt’. Visually, ‘timi’ is the focus point of the sign since it is prominently and centrally placed above the word ‘kinderjoghurt’, and accordingly attention is drawn first to it. The central positioning largely offsets the fact that the word ‘timi’ is printed in a font of smaller size than that used for the word ‘kinderjoghurt’ and the fact that the printing in white on a dark background might possibly make the word ‘timi’ less legible than the word ‘kinderjoghurt’ placed in the lower part of the sign. Moreover, aurally, it is clear that ‘timi’ is the first word to be pronounced, with the result that consumers attach most importance to it. The word ‘kinder’ is therefore overshadowed by the dominant element ‘timi’, which is undoubtedly what consumers find striking.
Thirdly, unlike its position in the earlier word mark on which the invalidity action is based, the word ‘kinder’ is found in the challenged mark between two other words namely ‘timi’ and ‘joghurt’. Such a difference substantially weakens not only any aural similarity between the two signs because of the shared element, but also any visual similarity as a result of that common element. Accordingly, the word ‘kinder’ is a negligible element in the overall impression produced by the mark at issue.
It follows from the foregoing that the Board of Appeal was correct to conclude that the signs at issue were not similar.
Such a conclusion is not rebutted by the arguments put forward by the applicant.
First, as regards both the argument based on the reputation of the earlier mark and the argument based on the similarity between the goods covered by the marks at issue, it is clear that, even if those factors may be taken into consideration in order to assess likelihood of confusion, they none the less do not affect the assessment of the similarity of the signs.
In any event, as regards the argument based on the reputation of the earlier mark, it must be noted that in the present case the lack of similarity between the signs at issue, as described in paragraphs 56 to 58 above, is so pronounced that the reputation of the KINDER mark, whether or not it is undisputed, is incapable of calling into question that lack of similarity. Moreover, as regards the argument based on the similarity of the goods covered by the marks at issue, it must be observed that, whereas the goods covered by the challenged mark all relate to yoghurt and all fall within Class 29, the goods covered by the 36 earlier rights relied on in support of the invalidity action are essentially cocoa and chocolate products as well as cakes, pastries and confectionery, and all fall within Class 30. Further, contrary to what is claimed by the applicant, that fact that a number of the latter products may contain some milk does not make them similar to milk or milk products in general, or, a fortiori, to yoghurt products. It follows from the foregoing that the lack of similarity between the signs at issue is certainly not offset by the existence of any similarity between the goods covered by the marks at issue.
Second, as regards the argument based on the existence of a family or series of marks, it must be recalled that it has been recognised by the case-law that, where there is a family or series of marks, the likelihood of confusion which must be assessed for the purposes of Article 8(1)(b) of Regulation No 40/94 is heightened by the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the challenged trade mark by considering erroneously that that trade mark is part of that family or series of marks (see, by analogy, Case
C-234/06 P
Il Ponte Finanziaria
v
OHIM
[2007] ECR I-7333
, paragraph 63). However, as is clear from that case-law, the existence of a family or series of marks is irrelevant to the assessment of whether or not the precondition of both Article 8(1)(b) and Article 8(5) of Regulation No 40/94 is satisfied, namely that the earlier mark and the challenged mark be similar.
In any event, even if the existence of a family or series of marks is a relevant factor in the assessment of whether there is such a similarity, the likelihood that consumers may actually consider in the present case that the challenged mark is part of that family or series of marks is very slight, if not non-existent, given the great differences between the challenged mark and the signs listed in paragraph 5 of the application.
In that regard, three points in particular should be noted. First, unlike the signs listed in paragraph 5 of the application, the element ‘kinderjoghurt’ in the challenged mark is written as a single word, with no space between the word ‘kinder’ and the word ‘joghurt’. Second, unlike the signs listed in paragraph 5 of the application, the challenged mark is characterised by the stylised unevenness of the element ‘kinderjoghurt’, as observed in paragraph 56 above. Third, unlike the signs listed in paragraph 5 of the application, the challenged mark contains the word ‘timi’ which, because of its dominance, overshadows the element ‘kinderjoghurt’ and, a fortiori, the element ‘kinder’, which is part of it.
Consequently, the argument based on the existence of a family or series of marks must be rejected.
Third, as regards the argument that the Board of Appeal did not take account of the fact that, under Article 8(5) of Regulation No 40/94, the assessment of the degree of similarity does not require an assessment of whether there is a likelihood of confusion, it is clear that the factors put forward by the Board of Appeal, and which the Court has adopted in paragraphs 56 to 58 above, demonstrate the lack of similarity irrespective of whether a degree of similarity could give rise to a likelihood of confusion. The applicant’s argument must therefore be rejected as ineffective.
Fourth and last, contrary to what is asserted by the applicant, the Board of Appeal did not err by carrying out an ‘analytical dissection’ of the challenged mark. When assessing the degree of similarity, the need to take account of the overall impression produced by the combined elements of those marks is not incompatible with examination of each element in turn. In the present case, after finding in paragraph 43 of the contested decision that the differences between the signs outweighed the single element of similarity, the Board of Appeal stated that, when they were ‘compared as wholes’, the overall impressions given by the signs at issue were different. Given that the ‘analytical dissection’ did not detract from a consideration of the overall impression produced by the combination of the constituent elements of the marks at issue, the applicant’s argument must be rejected as being unfounded.
If follows from all the foregoing that the second plea in law must be rejected as being unfounded.
In light of all the foregoing, the action must therefore be dismissed in its entirety.
Costs
Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, as applied for by OHIM.

On those grounds,
THE COURT OF FIRST INSTANCE (Second Chamber)
hereby:

1.
dismisses the action;

2.
orders Ferrero SpA to pay the costs.

Pelikánová
Jürimäe
Soldevila Fragoso
Delivered in open court at Luxembourg on 14 October 2009.
[Signatures]
(
*1
)	Language of the case: English.