When food content is important for design protection?

food-2490641_960_720The General Court of the European Union has ruled in case Case T‑352/19, Gamma-A SIA v Zivju pārstrādes uzņēmumu serviss SIA.

It concerns the following European design registered for class Class 9-3: ‘Packaging for foodstuffs’:

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The packaging represents a container with a transparent lid.

Against this design an application for invalidity was filed based on lack of novelty and individual character. The reason for this was the following earlier design for similar packaging:

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Initially the EUIPO dismissed the invalidity request stating that the food contained in the container is part of the deigns protection which makes both design dissimilar.

The Board of Appeal, however annulled this decision considering both design identical.

The General Court upheld this position. The fact that the contents of the packaging in which it is intended to be incorporated are visible does not extend the
protection conferred on the contested design to those contents. The presence of visible foodstuffs inside the products merely provides a better illustration of the purpose of the design, namely as packaging for foodstuffs, as well as one of their components, specifically the transparent lid. The comparison of the overall impressions produced
by the designs must relate solely to the elements actually protected . The protection
conferred by the contested design relates to its appearance in that it is intended to be incorporated into packaging for foodstuffs having certain components with specific characteristics, namely a metal container that has a transparent lid with a
translucent tab. The foodstuffs inside the container must not, therefore, be taken into consideration for the purpose of assessing the ‘overall impression’.

Based on this the registered design was invalidated successfully.

Source: Alicante News

Not everyone is allowed to use Irish names and symbols to sell products – an EUIPO decision

irish-844928_1920The Grand Board of Appeal of the EUIPO has ruled in an interesting case which concerns deceptive trademarks registered in bad faith.

The case at hand regards the following European trademark registered by the Spanish company Hijos de Moisés Rodríguez González S.A for the goods in class 29 (meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats):

La Irlandesa

This trademark was attacked by the Irish Ministry for Jobs, Enterprise and the Irish Dairy Board jointly with an invalidation request.

According to both institutions, the registered trademark can lead consumers to think that the branded goods originate from Ireland which could not be the case. What’s more the mark was registered in bad faith because the owner had trade relations with the Irish Dairy Board in the past and tried to registered several similar trademarks for La Irlandesa.

Although EUIPO initially dismissed the request for invalidation, the Grand Board upheld it entirely.

The name La Irlandesa has clear meaning associating with Ireland. In addition, the color and the graphical elements have such connotations too. This can deceive the consumer to think that the products are from Ireland. According to some evidence the mark was used not only for products imported from Ireland but for other goods too.

In order bad faith to be established consideration must be taken of: (a) the origin of the contested sign and its use since its creation; (b) the commercial logic underlying the filing of the application for registration of the sign as an EUTM; and (c) the chronology of events leading up to that filing (T-257/11, COLOURBLIND).

In addition, the concept of bad faith involves a dishonest intention or other deceitful motive that departs from accepted principles of ethical behaviour or honest commercial and business practices (T-795/17, NEYMAR).

Finally, pursuant to Articles 5(4) and 6(1)(b) of the Directive 2005/29/EC (Unfair Commercial Practices Directive), commercial practices are considered ‘unfair’ and therefore dishonest if they contain false information or are in any way such as to deceive the average consumer in relation, inter alia, to the main characteristics of the product, such as its geographical or commercial origin.

Taking into account all of the above, the Grand Board concluded that there is a bad faith intention for the registration of the mark bearing the mind the trade relations between the trademark owner and the Irish Dairy Board and the possibility for consumer deception.

Source: IPKat.

Balsamico and an Italian-German legal conflict

food-3360720_960_720.jpgThe Advocate General of the European Court G. HOGAN has issued his opinion in case C‑432/18 Consorzio Tutela Aceto Balsamico di Modena v BALEMA GmbH. The case concerns the following:

BALEMA GmbH produces vinegar-based products and markets them in the Baden region (Germany). For at least 25 years, it has been selling products under the designations ‘Balsamico’ and ‘Deutscher Balsamico’. The labels on its products bear the legend ‘Theo der Essigbrauer, Holzfassreifung, Deutscher Balsamico traditionell, naturtrüb aus badischen Weinen’ [Theo the vinegar brewer, matured in wooden barrels, German balsamic vinegar, traditional, naturally cloudy, made from Baden wine] or ‘1. Deutsches Essig-Brauhaus, Premium, 1868, Balsamico, Rezeptur No 3’ [first German vinegar brewery, premium, 1868, balsamic, recipe No 3].

It is agreed that BALEMA’s products designated as ‘Balsamico’ are not covered by the registration ‘Aceto Balsamico di Modena (PGI)’ pursuant to Article 1 of and Annex I to Regulation No 583/2009 because they do not fulfill the product specifications contained in Annex II of that regulation.

Consorzio Tutela Aceto Balsamico di Modena (‘the Consorzio’) is a consortium of producers of the products designated by the name ‘Aceto Balsamico di Modena’. It considers that BALEMA’s use of the designation ‘Balsamico’ infringes the protected geographical indication ‘Aceto Balsamico di Modena’. The Consorzio thus served a warning notice on BALEMA. BALEMA, in turn, brought an action in the German courts against the Consorzio seeking a negative declaration to the effect that there had been no trade mark infringement. That action was unsuccessful.

In the appeal on the merits, BALEMA sought a declaration that it is not obliged to refrain from using the designation ‘Balsamico’ for vinegar-based products produced in Germany. The appeal on the merits was upheld as the court considered that the use of the name ‘Balsamico’ in respect of vinegar did not infringe Article 13(1)(b) of Regulation No 1151/2012. According to that court, the protection for the name ‘Aceto Balsamico di Modena’ granted by Regulation No 583/2009 was conferred only on the entire name and not on the non-geographical components of the term as a whole, even if used jointly.

The case was appealed to the referring court.

The referring court considers that the appeal on a point of law will succeed if the names ‘Balsamico’ and ‘Deutscher Balsamico’ used by BALEMA infringe Article 13(1)(a) or (b) of Regulation No 1151/2012. According to that court such a finding would require that the protection of the entire name ‘Aceto Balsamico di Modena’ granted by Article 1 of Regulation No 583/2009 also covers the use of the individual non-geographical components of the term as a whole (‘Aceto’, ‘Balsamico’, ‘Aceto Balsamico’).

The Federal Court of Justice notes that it is clear from the second subparagraph of Article 13(1) of Regulation No 1151/2012 and the case-law of the Court that, pursuant to Article 13(1)(a) or (b) of that regulation, a protected geographical indication that consists of several terms can be protected against not only the use of the entire indication, but also against the use of individual terms of that indication. The second subparagraph of Article 13(1) of Regulation No 1151/2012 governs the specific case in which a protected geographical indication contains within it the name of a product which is considered to be generic. That provision stipulates that the use of that generic name is not to be considered to be contrary to Article 13(1)(a) or (b) of that regulation. The Federal Court of Justice also refers to the fact that the Commission regulation registering the name may restrict the scope of the protection of a protected geographical indication that consists of several terms so that it does not cover the use of individual terms of that indication. In that regard, the fact that an applicant may state that it does not seek protection for all elements of a name shows that the protection granted by its registration can be restricted.

The Federal Court of Justice considers that recitals 3, 5 and 10 of Regulation No 583/2009 militate in favor of a restriction of the scope of protection to the name ‘Aceto Balsamico di Modena’ as a whole, to the exclusion of individual non-geographical components. It also considers that, contrary to the view taken in the appeal on a point of law, the assumption that protection is granted to the name ‘Aceto Balsamico di Modena’ as a whole did not give rise to an inconsistency with the registration of the protected designations of origin ‘Aceto balsamico tradizionale di Modena’ and ‘Aceto balsamico tradizionale di Reggio Emilia’. Contrary to Regulation No 583/2009, the references to a restricted scope of protection in Regulation No 813/2000, which may be attributable to the fact that there was no opposition by Member States pursuant to Article 7 of Council Regulation (EEC) No 2081/92 (now Articles 51 and 52 of Regulation No 1151/2012) in the preceding registration procedure, does not preclude a restriction of the protective effect of the name ‘Aceto Balsamico di Modena’ as a whole.

In those circumstances, the Bundesgerichtshof (Federal Court of Justice) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Does the protection of the entire name “Aceto Balsamico di Modena” extend to the use of the individual non-geographical components of the term as a whole (“Aceto”, “Balsamico”, “Aceto Balsamico”)?’

The Advocate’s position is:

The protection of the entire name ‘Aceto Balsamico di Modena’ under Commission Regulation (EC) No 583/2009 of 3 July 2009 does not extend to the use of the individual common words or non-geographical components, namely, ‘Aceto’, ‘Balsamico’ and ‘Aceto Balsamico’.

The battle for ICELAND continues

pexels-photo-414101Iceland Foods will appeal the EUIPO’s decision for cancelation of its trademark ICELAND registered in 2014 for classes 7, 11, 16, 29, 30, 31, 32, 35. This trademark is used for supermarkets in The UK.

The procedure was initiated by Promote Island, a government organization from Iceland based on Article 52(1) EUTMR in conjunction with Article 7(1)(c) EUTMR:

The following shall not be registered:

  • (a) signs which do not conform to the requirements of Article 4;
  • (b) trade marks which are devoid of any distinctive character;
  • (g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;

The EUIPO agreed with Promote Island and canceled the trademark. The arguments for this are:

It follows from all of the above that ‘ICELAND’ may serve, from the point of view of the public concerned, to designate an essential and desired characteristic of the goods and services.

Therefore, the mark conveys obvious and direct information regarding the geographical origin of the goods and services in question, and in some cases, the subject matter of the goods as well.

Considering all of the above, it follows that the link between the word ‘ICELAND’ and the contested goods and services is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR and that this was also the situation at the time of filing of the contested EUTM, namely, 19/04/2002.

The EUIPO found that Iceland Food failed to prove acquired secondary distinctiveness in the EU.

The Icelandic foreign minister Gudlaugur Thór Thórdarson expressed his satisfaction with this decision.

“It is contrary to common sense for a foreign company to be able to appropriate the name of a sovereign state as was being done in this case”, the minister said.

Iceland’s foreign ministry added that consumers were likely to associate the mark with “the country of Iceland for all goods and services the registration is claimed for”.

Source: WIPR.

The UK Wagamama won a trademark despite

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The UK restaurant chain for Japanese cuisine Wagamama won a trademark dispute against an application for a new trademark Wakayama applied for prepared meals, instant meals” and other food products “all consisting principally of noodles.

According to the restaurant chain, this trademark was confusingly similar to their one, what’s more, it could take advantage from Wagamama reputation on the market.

According to the applicant, there was no conflict between both signs because their trademark covers different letters.

The UK IPO has issued a decision stating that the later mark can create a consumer confusion due to the high level of visual and aural similarities in the presence of identical and similar goods. The different letters in the applied for trademark cannot overcome this negative outcome.

Source: WIPR.

PepsiCo won a crisp lawsuit in the EU

snack-1555522_960_720PepsiCo won lawsuit T‑82/17 before the General Court of the European Union regarding invalidation of ‘Exxtra Deep’ European trademark registered by the German-based company Intersnack Group for classes 29, 30 and 31.

According to PepsiCo, this trademark is descriptive and devoid of distinctive character for the goods in the above-mentioned classes.

The EUIPO upheld the invalidation partly, accepting that DEEP can be used from manufacturers to describe the crisp deep ridges, that is to say, the product shape. For some of the products, however, the trademark is not descriptive, namely for dried fruits and preserved vegetables.

PepsiCo appealed this decision.

According to the General Court, the EUIPO erred in its assessment because crisp can be produced based on fruits and vegetables too.

First, as is expressly indicated in the description of the goods in Class 29 covered by the contested mark, snack products (in particular crisps) are made from potatoes, which, it cannot be denied, are vegetables, as demonstrated in particular by the definition in the Oxford English Dictionary, produced by the applicant before EUIPO, according to which a vegetable is ‘any living organism that is not an animal; specifically one belonging to the plant kingdom’. That fact is not disputed by the intervener.

Second, crisps can be made from vegetables other than potatoes, or from fruit, as the applicant points out.

Third, there is nothing to prevent crisps made from vegetables or from fruit from being regarded as dried or cooked vegetables or fruits. As the applicant notes, crisps can be fried or dried or cooked.

Fourth, as the applicant correctly states, fruit and vegetables in Class 29 are ‘preserved, dried and cooked’. They are not fresh fruit, which comes under Class 31. Crisps, or more broadly, ‘extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks’, are produced from preserved, dried or cooked vegetables and fruits.

Thus, on the grounds put forward by the applicant, which are not disputed by EUIPO, ‘extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks’, in Class 29, are covered by the category of ‘preserved, dried and cooked fruit and vegetables’ in the same class.

How Tesco kept the surprise about its new stores?

shop-2607121_960_720Claire Jones (Novagraaf) published an interesting article for Lexology which presents Tesco’s approach regarding the launch of its new retail stores in the UK and what is common with the trademark strategy that the company used.

Tesco, as one of the biggest retailer in the country, decided to launch new stores that would compete directly with Lidl and Aldi under Jack’s brand.

The company desire was to keep this in a complete secrecy because of which Tesco signed non-disclosure agreements with its employees and partners.

So far so good, but what about the trademark protection that this new brand needs. If the company had filed an application in the UK or the EU this would have revealed its intentions to some extent.

To prevent this, Tesco filed for a trademark Jack’s in Sri Lanka for all classes of the Nice classification.

You may ask how this does help the company bearing in mind that the stores are in Europe?

Well according to the Paris Convention for protection of industrial property, if you file for a trademark in one Member State of the Convention and within 6 months you do this in another Member State for the same mark, your second application can use the priority date of the first one.

So in the case of Tesco they did exactly this. Of course, this by itself doesn’t mean that you will register successfully your mark because, for example, owners of earlier identical or similar marks can oppose you. Nevertheless, such a strategy can help you to hide your moves to your competitors.

The full text can be found here.