When you want to use a trademark that even vaguely associates with another well-known mark this always hides potential risks. Such is the case between Intercontinental Great Brands LLC and Costa & Casimiro, Lda.
The Portuguese company Costa & Casimiro registered successfully the following combined European trademark in class 29 – Spreading cream based on almonds; Prepared fruit products; Vegetable fats for edible purposes; Vegetable oils for edible purposes; Mixed vegetable oils for culinary use; Vegetable extracts for food; Vegetable pates; Almonds, processed; Almond oil:
Against this mark, an application for invalidation was filed by the US company Intercontinental Great Brands on the ground of several earlier EU, Spanish and Portuguese trademarks PHILADELPHIA in class 29 – meat, fish, poultry and game; meat extracts; Canned, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products, cheese, cream cheese; edible oils and fats.
On top of that, the US company claimed an acquired reputation for its trademarks based on Article 8(5) EUTMR. According to Intercontinental Great Brands, the Portuguese company tries to take advantage of their earlier marks by using a sign that associates with them.
The EUIPO considered the goods in both marks similar or identical. When it comes to the signs, the Office concluded that they are phonetically and visually similar to a mid-degree. The reason for this was the fact that the first part of the mark applied for VEGAN is descriptive of the goods in class 29. The second part DELPHIA duplicate the earlier marks in their last parts and conveys an association with them.
Conceptually the signs are not similar. PHILADELPHIA is a city in the USA, which name has the necessary distinctiveness for the goods in class 29.
Costa & Casimiro’s arguments that DELPHIA is a personal name were dismissed because there was no solid evidence that many people in the EU have such a name or are aware of it.
On the other hand, the US company successfully proved reputation of its marks in the EU, citing strong market shares in several countries and massive advertisement campaigns.
Based on this, the EUIPO decided that the signs are similar enough and that the available reputation of the earlier marks supports the conclusion that some unfair advantages could be taken from it through the later application. The element DELPHIA associates with PHILADELPHIA and consumers can perceive the VEGANDELPHIA brand as a vegan variant of the earlier signs.
The invalidation was upheld.
Source: Alicante news.