The EUIPO Board of Appeal ruled in the case R2378/2017-2 between Intercontinental Great Brands LLCи and the Spanish company GALLEAS Gullón, S.A.
The case concerns an application for the following EU trademark applied by Gullón in class 30:
Against this application an opposition was field based on the following earlier marks in class 30 too:
According to the Opposition division, there is a possibility for consumer confusion regarding these marks because there is visual and conceptual similarity due to the shared image of sandwich biscuits. These particular biscuits have a reputation among consumer based on prolonging use throughout the years which was proved by a survey.
The Board of Appeal upheld the decision. Although there are differences between the word parts of the marks, this cannot overcome the similarities that the signs have supported by the reputation acquired by the biscuit images related to the earlier marks. This creates a real possibility for consumers to consider that there is a link between the later mark and the owner of the earlier marks.
Eleonora Rosati published an interesting story for IP Kat regarding a lawsuit in Milano, Italy which concerns a fight with biscuits and cushions.
Barilla is the owner of several EU trademarks for Pan di Stelle,Galletti, Abbracci, Rigoli, Mooncake, Crostatina, Batticuori, Ringo, and Gocciole, all used for different types of biscuits and desserts.
Another Italian company tried to negotiate to use these marks for production of cushions. The deal never happened, nevertheless this company started production of such cushions using similar names such as Pandistelloso, Gallettoso, Rigoloso.
As a result, Barilla initiated a lawsuit in Milano for trademark infringement and won it.
According to the court, the defendant used similar marks and in that way infringed IPRs belong to Barilla. The defendant’s argument that there was no infringement due to the fact that biscuits and cushions are in different Nice classes was dismissed. The Court stated that Barilla’s trademarks have a well-known status among the consumers, because of which the defendant tried to take unfair advantages of the reputation of the trademarks.
The court ordered the defendant to pay damages for EUR 150,000, as well as covering the costs of litigation.
This case is indicative of the fact that although trademark protection is limited to the Nice classes of goods and services mentioned in the trademark application, that’s not always the case. There are additional facts that have to be taken into account before another trademark use to be initiated.