Milka is one of our favorite clients to work with, and their brand has fans all across Europe and even the U.S. They have been delighting with delectable confections for over a century – ever since their conception in Switzerland – with chocolate bars of all types and flavors.
Intellectual property law is our passion here at Brandstock, so when it comes to ensuring brands are protected, we take cases big and small. However, it probably comes as no surprise that when we achieve a win on a unique, groundbreaking level, we can’t help but share the story.
Background of the Milka Case
Mondelēz is the owner of various trademarks for their beloved “MILKA” brand. During their regular trademark monitoring, our client became aware of a German trademark application 302015107131 (German TM App “MILCKA” – for various services in classes 35, 41 and 42).
Mondelēz instructed us to take over the case and asked to proceed against this application. After the applicant did not answer our attempts to find an amicable solution, Mondelēz instructed us to file an opposition.
Our Arguments in the Milka Case
The substantiation of this opposition was a bit of a particular case since Mondelēz’s goods, and the applicant’s services cannot be considered similar. Therefore, the only way to successfully come to a positive result for Mondelēz was to argue around the reputation of the Milka trademarks in Germany. With that, there were two main challenges:
1. Brand Reputation
The reputation of Milka as a trademark: To our understanding, it was evident that Milka is a trademark with an enormous reputation – it’s one of the most valued brands in Germany. It has a history of many years (again, having been around since the early 1900s), their products can be purchased in almost any supermarket and is continuously featured in commercials.
2. Brand Connection
The connection between the goods and services: The reputation claim allows the client to proceed against applications covering different products and services. However, the courts usually limit it to those items that consumers would still connect for logical reasons. Such a connection would be hard to establish since there is typically no apparent connection between chocolate goods and consulting services (class 35).
Our approach was to argue with the excellent reputation of the Milka trademark to overcome this limitation. We felt that such highly well-known trademarks should extend beyond their specific field of business, to all other products and services.
This argument is supported by the fact that the applicant very obviously intended to take unfair advantage of the Milka reputation. They additionally used a font type for the “M” that is identical to the way Mondelēz uses it on the packaging of their Milka products.
The GPTO Decision
The GPTO (German Patent and Trademark Office) accepted our argument that the opposition trademark Milka is exceptionally well-known in Germany and that the German trademark application 302015107131 is suspiciously similar in all aspects to Mondelēz’ original Milka trademark.
Based on our arguments above, the GPTO further concluded that – even though the marks do not enjoy protection for similar goods and might not have the usually necessary connection – the opposed trademark would take unfair advantage of the distinctive character or the reputation of the already existing and well-established Milka trademark.
Why the Milka Case is Important
We have not found a decision from the upper courts on a similar situation (in particular, a high level of reputation for the opposing mark plus a possible missing connection between the goods and services at hand). Therefore, we believe this may very well have been the first decision in which the GPTO accepted that highly well-known trademarks apply to all other classes – even to those items lacking a logical connection to the goods and services covered by the opposition trademark.
We will have to wait and see if this is the start of a new way of looking at things or whether this will remain a single-case decision. There might not be many trademarks on the market with a reputation level like Milka, so it could take some time until the next comparable case has to be decided.
We look forward to seeing what this means for the industry. If we helped set the tone for the future of our field, all the better – we’re excited to be of such help!
If you’d like to learn more about this case, or if your company is looking for assistance with an intellectual property matter of its own, we encourage you to get in touch with us. We’ll talk about the specifics of your case and how we can help. Let’s break the mold – when you work with Brandstock, there’s no end to the possibilities of what we can achieve, together!
