Brandstock wins groundbreaking verdict for Mondelēz Milka trademark

Mondelēz is the owner of various trademarks for the beloved Milka brand. During its regular trademark monitoring, the company became aware of a German trademark application 302015107131 (German TM App “MILCKA” – for various services in classes 35, 41 and 42).

Mondelēz instructed Brandstock Legal to take over the case and asked us to proceed against this application. After the applicant did not respond to our attempts to find an amicable solution, Mondelēz instructed us to file an opposition.

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 the Milka 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 long history (having been around since the early 1900s), its products can be purchased in almost any supermarket, and the Milka trademark is continuously featured in commercials.

2. Brand Connection

The connection between the goods and services: The reputation claim allowed our 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 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 in which Mondelēz uses it on the packaging of the Milka products.

The Deutsches Patent- und Markenamt (German Patent and Trademark Office, DPMA) 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’s original Milka trademark.

Based on our arguments above, the DPMA further concluded that – even though the marks do not enjoy protection for similar goods and might not have the connection that is usually necessary – the opposed trademark would take unfair advantage of the distinctive character or the reputation of the already existing and well-established Milka trademark.

We have not found a decision from the upper EU 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 DPMA 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's, 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 the Milka trademark case or if your company is looking for support on an IP matter of its own, speak to your attorney or contact us today.