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Bottom line: The Board found that TIVOLI within the package design mark will be recognized as a source identifier and is confusingly similar to TIVOLI in katakana.

K.K. Tivoli has a trademark registration for TIVOLI in katakana for confectionery and raised an invalidation action against the international registration for the mark shown below designating cookies and biscuits:

<Registered mark in dispute>

The mark at issue is apparently a cookie tin, where several words are included, such as TIVOLI, DELICIOUS COOKIES, DELICIEUX BISCUITS, NO PRESERVATIVES, and fruit and cookies are depicted.  The Board found that the words COOKIES, BISCUITS, DELICIOUS (DELICIEUX) and NO PRESERVATIVES merely describe the goods and none of them is inherently distinctive.  And the design of fruit and cookie is not distinctive either.

In view that the term TIVOLI is written by boldface in the upper part of the lid, outstandingly and separately from other literal elements and that TIVOLI is also shown in the first line at the side surface of the cookie tin, the Board found that the term TIVOLI functions as a source identifier and is the dominant element of the mark at issue.  Accordingly, the registered mark will have sound corresponding to TIVOLI and indicate the resort town in Italy or an amusement park in Denmark.  Despite the visual difference, the registered mark is identical to the cited mark in sound and connotation, and the Board found that the registered mark is confusingly similar to the cited mark.

Defendant argued that the registered mark is a whole design of a cookie tin which should be recognized as a whole, and that TIVOLI alone will not function as a source identifier.  The Board did not share this view, but pointed out that package design includes distinctive elements (source identifier) and non-distinctive elements such as indication of quality or ingredients, photo or products, etc.  Further, package (and its indication) may be changed at the time of renewal of products.  Thus, the consumer will see the non-distinctive elements and primarily understand what they indicate, but will not have a clear notion.  Besides, the consumer will not always recall the entire package precisely.  Accordingly, the word TIVOLI shown distinctively in the registered mark will function as a source identifier.

And so the Board decided in favor of Plaintiff and that the registration for the package design should be invalidated due to the similarity with TIVOLI in katakana.