Partner, European Patent Attorney
Sweet victory for Latvian confectionery producer in wrapper trademark battle
The Appeals Division of the Lithuanian State Patent Bureau has rejected an opposition filed by Kraft Foods Schweiz Holding GmbH against Orkla Confectionery & Snacks Latvia SIA’s application for the registration of the figurative mark LAIME LAIMA 1870. The mark contained a variety of word and graphical elements which had an influence on the different overall impression created by the marks and outweighed the similarity of their colour combination.
To mark the 150-year anniversary of Latvian confectionery producer Laima, which is owned by Orkla, the producer released sweets with wrappers bearing the words ‘Laime Laima 1870’ on the Latvian market. The packaging was bright red, with firework imagery, and contained the word ‘Laime’ (meaning ‘happiness’) and the brand owner’s name Laima.
Orkla received a letter from Kraft Foods warning about the alleged infringement of its earlier wrapper for the Miglė sweets and requested a change to the packaging. In order to settle the dispute, Orkla changed the colour of the wrapper to dark red. It subsequently started selling the sweets in Lithuania. Kraft Foods held that the change in colour was insufficient to avoid a likelihood of confusion and contacted Orkla, requesting further change to the wrapper.
Orkla considered that the amendment eliminated the possibility of confusion and on 19 October 2018 it applied to register the LAIME LAIMA 1870 mark (No 80919) for confectionery and sweets in Class 30 to protect its wrapper in Lithuania.
On 30 July 2019 Kraft Foods filed an opposition with the Appeals Division requesting the invalidation of the LAIME LAIMA 1870 trademark for all goods in Class 30 based on Part 3 of Article 7 of the Law on Trademarks, which was valid until 1 January 2019. It claimed that the mark was similar to the Miglė wrappers, which had a reputation in Lithuania, and that Orkla had filed the application in bad faith. Kraft Foods had registered the MIGLĖ word mark for goods in Class 30 (No 23922) in Lithuania. It stated that the Miglė sweet wrappers had been used in Lithuania since 2000 and that Miglė sweets were a big part of the confectionery market and were known to Lithuanian consumers. Orkla’s filing of the trademark application after receiving the opponent’s warning letter confirmed its unfair intentions. To support its arguments, Kraft Foods filed public survey results showing knowledge of the MIGLĖ mark in Lithuania and sales figures. The survey questions regarding similarity showed a collection of each parties’ sweets.
In addition, on 17 April 2019 Kraft Foods applied to register the Miglė wrappers as a trademark for goods in Class 30. The mark was registered on 27 September 2019 (no 81596).
Orkla disagreed with Kraft Foods, stating that Kraft Foods owned the word mark MIGLĖ, but not the trademark registration for the wrappers. Further, it claimed that Kraft Foods had based its arguments on the reputation of its figurative sign, but did not base its opposition on reputation. Although Orkla knew about the earlier sign, this knowledge alone did not prove bad-faith intentions. Filing an application to register its mark was necessary to protect its rights, while changing the colour of the wrapper to a different shade of red proved its good-faith intentions after receiving the claim.
Orkla further criticised the public survey results as its questions related to the knowledge of the MIGLĖ word mark. Further, the sweets in wrappers, rather than the marks, were shown to the respondents when questioned on similarity, which should be considered incorrect.
As to the similarity of the marks, Orkla stated that the marks differed due to different word elements, which were written in different lettering and had a different meaning, which were the dominant and most important elements of the marks. Moreover, the figurative elements and shades of red differed. Based on the grounds that the marks gave different overall impressions, they should not be considered to be similar.
This article first appeared on WTR Daily, part of World Trademark Review, in February/2021. For further information, please go to www.worldtrademarkreview.com