No confusion
Although both marks concern chocolate, Merci is fairly well known, and American consumers will translate both marks as “Thank you,” the trademark office nevertheless believes that Merci and Danke are so far apart visually and phonetically that the American public will not confuse them.
Expression of gratitude
The trademark office was also influenced by a Google Image search submitted by the applicant for the mark Danke. It showed 27 chocolate products used in combination with the words “Thank You.” According to the office, consumers are therefore accustomed to perceiving the phrase “Thank You” as an expression of gratitude when used in connection with chocolate. Storck itself also promotes Merci chocolate in its marketing as a way to say “thank you.” This, according to the trademark office, makes the Merci mark weak.
Europe?
In my view, there is a strong chance that the same case in Europe would have led to a different outcome. First, under European law, even conceptual similarity between two marks can in principle be sufficient to establish trademark infringement.
More importantly, in Europe Storck regularly succeeds in taking action against chocolate brands that are translations of Merci. For example, following Storck’s opposition, the figurative mark Thank You Chocolats was refused European registration. The same happened to the marks Thank You Icecreams, Thank You Coffee, and Thank You Biscuits. In all of these cases, the European trademark office took into account that the Merci mark enjoys a strong reputation and therefore a broad scope of protection. In Europe, Storck thus not only manages to take a firm stand against translations of Merci, but even succeeds in stopping such marks when they fall just outside the “chocolate” category, such as coffee, ice cream, and biscuits. If I were that chocolate brand Danke, I would happily stay in the US.
Bas Kist
Banner photo: KathmanduFoodies, CC BY-SA 3.0, via Wikimedia Commons
Merci Box photo: © Raimond Spekking / CC BY-SA 4.0 (via Wikimedia Commons)
