The owner of the PHILADELPHIA trademark prevailed against VEGANDELPHIA in the EU

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.

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Denmark lost a dispute regarding Feta cheese produced only for export from the territory of the EU

The European Court has ruled in the case C‑159/20 the European Commission v the Kingdom of Denmark which closed the door to one of the few misunderstandings regarding the scope of geographical indication protection in the EU.

In the case at hand, Greek complained before the Commission that cheese manufacturers from Denmark use the protected geographical indication Feta by labeling their products as ‘Danish Feta’ and ‘Danish Feta cheese’. Denmark refused to prohibit such use on its territory stating that the production was only for export purposes not for sale on the territory of the EU. According to the Kingdom, this type of GI use was not prohibited by the EY Regulations.

The European Commission disagreed and initiated a lawsuit against Denmark. The Advocate General issued its opinion that reasonings are now upheld by the Court.

According to the Court’s decision:

Recital 18 of Regulation No. 11512012 states that the specific objectives of PDO and PGI protection are to ensure fair income for farmers and producers according to the qualities and characteristics of a given product or its production method and to provide clear information about products with specific characteristics related to geographic origin, thereby enabling consumers to make more informed purchasing choices.

In addition, it follows from the Court’s practice that the purpose of the PDO and PGI protection system is mainly to guarantee consumers that agricultural products bearing a registered name have certain specific characteristics due to their origin in a certain geographical area and therefore provide a guarantee of quality due to their geographical origin in order to allow agricultural operators who have made a genuine effort to improve quality to receive higher incomes in return and to prevent third parties from unfairly benefiting from the reputation, related to the quality of those products (judgments of 17 December 2020, Syndicat interprofessional de défense du Fromage Morbier, C‑490/19, EU:C:2020:1043, paragraph 35 and the case-law cited and by the analogy of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 49).

Since the Kingdom of Denmark points out that it follows from these objectives that Regulation No 1151/2012 is aimed at introducing a system of protection of PDOs and PGIs for products placed on the internal market because the said users are those in the Union, it should be noted that this regulation clearly applies to these users and not to users in third countries. Indeed, that regulation, adopted on the basis of Article 118 TFEU, concerns the functioning of the internal market and, as that Member State points out, is aimed at the integrity of the internal market and consumer information in the Union.

It should also be noted that the objective of informing consumers and the objective of guaranteeing a fair income for producers in accordance with the qualities of their products are interrelated, since informing consumers is aimed in particular, as is clear from the case law, at this to allow agricultural operators who have made real efforts to improve quality to receive higher incomes in return.

However, as follows from recital 18 and from Article 4(a) of Regulation No 1151/2012, the objective of guaranteeing fair income to producers in accordance with the qualities of their products is itself an objective pursued by that regulation. This also applies to the purpose of ensuring the respect of intellectual property rights enshrined in Article 1, letter c) of this Regulation.

It is clear, however, that the use of the PDO ‘Feta’ to designate products produced in the territory of the Union which do not comply with the product specification of that PDO affects the two stated objectives, even if those products are intended for export to third countries.

Finally, as regards compliance with the principle of legal certainty, it should be noted that, undoubtedly, Regulation No. 1151/2012 does not explicitly state that it also applies to products produced in the Union for the purpose of export to third countries. However, in view in particular of the general and unequivocal nature of Articles 13, 36, and 37 of Regulation No 1151/2012, which do not provide for an exception to such products, and the fact that the said objectives are clearly stated in Articles 1 and 4 of that Regulation, Article 13(3) thereof appears clear and unequivocal in so far as it obliges Member States to take appropriate administrative and judicial measures to prevent or suspend the use of a PDO or a PGI to designate products produced on their territory that do not comply of the applicable product specification, including where these products are intended for export to third countries.

Based on the stated considerations, the Court decided:

By failing to prevent or stop the use by Danish milk producers of the Protected Designation of Origin (PDO) ‘Feta’ to designate cheese that does not comply with the product specification of that PDO, the Kingdom of Denmark has failed to fulfill its obligations under Article 13(3) of Regulation (EU) No. 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs.

(unofficial translation)

Denmark has legal troubles with Feta cheese in the EU

The Advocate General of the European Court ĆAPETA has given an opinion on Case C‑159/20 European Commission v Kingdom of Denmark.

This case concerns the issue of enforcement of geographical indication rights in Denmark related to the Greek Feta cheese.

In the present case, by bringing an action under Article 258 TFEU, the European Commission asks the Court to declare that the Kingdom of Denmark has breached its obligations under Article 13 of Regulation No 1151/2012 by failing to prevent or stop the use of the name ‘Feta’ on the cheese produced in Denmark intended for export to third countries. The Commission also claims that the Kingdom of Denmark has breached its obligations of sincere cooperation arising under Article 4(3) TEU, either alone or in conjunction with Articles 1(1) and 4 of Regulation No 1151/2012.

‘Feta’ is a type of cheese, traditionally produced from sheep’s, or sheep’s and goat’s, milk in parts of Greece. For those who want to learn more about ‘Feta’, I refer to the poetic description offered by Advocate General Ruiz-Jarabo Colomer, as I could not put it in better words myself. (4) Importantly for the case at issue, since 2002, the name ‘Feta’ is registered as a protected designation of origin (‘PDO’) under EU law. 

On the basis of Regulation No 1151/2012, registration of the name ‘Feta’ as a PDO means that it can be used only for cheese originating in the specified geographical area in Greece and complying with the product specification in Regulation No 1829/2002.

Article 13(3) of Regulation No 1151/2012 obliges the Member States to take the necessary measures to prevent or stop the unlawful use of registered PDOs on their territory. The Commission, supported by the Hellenic Republic and the Republic of Cyprus, claims that the Kingdom of Denmark has breached that obligation by not preventing or stopping the use of the name ‘Feta’ for cheese produced in Denmark and intended to be exported to third countries.

The Kingdom of Denmark does not deny that it does not prevent or stop the producers on its territory from using the name ‘Feta’ if their products are intended to be exported to third countries. It considers, however, that Regulation No 1151/2012 applies only to products sold in the EU, and does not cover exports to third countries. In its view, therefore, the use of the name ‘Feta’ for cheese produced in Denmark, but destined only for export to the markets of third countries where the name ‘Feta’ is not protected on the basis of an international agreement does not amount to an infringement of Regulation No 1151/2012. Therefore, failure to prevent or stop the use of the name ‘Feta’ for exported cheese does not breach the obligation under Article 13(3) of Regulation No 1151/2012 because such an obligation does not arise under that provision.

In essence, the main dispute between the parties to the present case is about whether the relevant EU law prevents the use of the name ‘Feta’ for products exported to third countries which are not produced in accordance with the product specification of ‘Feta’ as a registered PDO.

To be clear, the dispute is not about the competences of the EU. The Kingdom of Denmark does not claim that the EU lacks competence to legislate with a view to prohibiting the use of the name ‘Feta’ for exported products. It only claims that, under current legislation, the EU legislature did not choose to prohibit such use.

Consequently, the present case requires the Court to interpret the scope of application of Regulation No 1151/2012. The prerequisite for that is an understanding of the underlying reason and purpose of protection of geographical indications, and more precisely of PDOs, as intended by the EU legislature. This case also raises some important questions concerning the principle of sincere cooperation laid down in Article 4(3) TEU in the context of infringement actions brought against the Member States.

The Advocate General’s opinion:

 In the light of the foregoing considerations, I propose that the Court should:

1. Declare that, by failing to prevent or stop the use by Danish producers of the registered name ‘Feta’ for cheese intended for export to third countries, the Kingdom of Denmark has failed to fulfil its obligations under Article 13 of Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs;

2. Dismiss the action as to the remainder;

3. Order the European Commission and the Kingdom of Denmark each to bear their own costs; and

4. Order the Hellenic Republic and the Republic of Cyprus each to bear their own costs.

Is cheese close to restaurant services?

The protective Foundation for Halloumi Cheese won an interesting lawsuit before the General Court of the European Union.

The case T‑555/19 concerns an application for European trademark for GRILLOUMI filed by the Swedish company Fontana Food AB in class 43 – services for providing food and drink; coffee shop services; restaurants.

The Foundation filed an opposition based on an earlier collective European trademark for Halloumi  in class 29 – cheese.

The EUIPO dismissed the opposition. Although the Office acknowledged that it is possible the goods from class 29 to be complementary to the services in class 43, this wasn’t proved for cheese in particular.

The Court disagreed and annulled this decision. According to the-case law goods and services may be complementary if they share close connection, that is to say one is indispensable or important for the use of the other.

According to the court:

As is apparent from the case-law of the Court, it must be stated that the goods in Class 29, inter alia, cheese, are necessarily used in the serving of food and drink, with the result that those goods and those services are complementary. First, cheese may be offered to the clientele of many restaurants, or even of coffee shops, by being incorporated as an ingredient in dishes that are intended to be sold on the premises or to be taken away. Secondly, cheese, without being processed as an ingredient, may be sold as it is to consumers, in particular in restaurants in which the activity is not confined to the preparation and serving of cooked dishes, but also consists of selling food which is intended to be consumed away from the place in which it is sold. Such goods are therefore used in
and offered by means of services for providing food and drink, restaurant services or coffee-shop services. Those goods are consequently closely connected with those services.

Based on this the Court found cheese as a complementary good to the above mentioned services in class 43.

Source:  Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Geographical indications can cover not only names but product appearance too – an EU Court decision

The European Court has ruled in case C‑490/19 Syndicat interprofessionnel de défense du fromage Morbier v Société Fromagère du Livradois SAS. This case focuses on the issue to what extent protection of geographical indications covers their names as well as the product appearance too. The case has the following bachground:

In accordance with the decree of 22 December 2000, Société Fromagère du Livradois, which had produced Morbier cheese since 1979, was authorised to use the name ‘Morbier’, without the AOC indication, until 11 July 2007. After that date, it substituted for that name the name ‘Montboissié du Haut Livradois’. Moreover, on 5 October 2001, Société Fromagère du Livradois filed an application in the United States for the US trade mark ‘Morbier du Haut Livradois’, which it renewed in 2008 for 10 years, and, on 5 November 2004, it filed an application for the French trade mark ‘Montboissier’.

On 22 August 2013, accusing Société Fromagère du Livradois of infringing the protected designation and committing acts of unfair and parasitic competition by producing and marketing a cheese that has the visual appearance of the product covered by the PDO ‘Morbier’, in order to create confusion with that product and to benefit from the renown of the image associated with it, without having to comply with the specification of the designation of origin, the Syndicat brought proceedings before the Regional Court, Paris, France requesting that Société Fromagère du Livradois be ordered to cease any direct or indirect commercial use of the name of the PDO ‘Morbier’ for products not covered by that name, any misuse, imitation or evocation of the PDO ‘Morbier’, any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product by any means liable to convey a false impression as to the origin of the product, any other practice liable to mislead the consumer as to the true origin of the product and, in particular, any use of a black line separating two parts of the cheese, and to compensate it for the damage suffered.

Those applications were dismissed by judgment of 14 April 2016, which was upheld by the Court of Appeal, Paris, France by judgment of 16 June 2017. The Court of Appeal, Paris held that the marketing of a cheese which has one or more features contained in the specification for Morbier cheese, and which therefore resembles that cheese, did not constitute misconduct.

In that judgment, after stating that PDO legislation aims to protect not the appearance or features of a product as described in its specification, but its name, and therefore does not prohibit a product being made using the same techniques as those set out in the standards applicable to the geographical indication, and after taking the view that, in the absence of an exclusive right, reproducing the appearance of a product falls within the scope of the freedom of trade and industry, the Court of Appeal, Paris held that the features relied on by the Syndicat, in particular the blue horizontal line, relate to a historical tradition, an ancestral technique present in other cheeses, which were implemented by Société Fromagère du Livradois even before the PDO ‘Morbier’ was obtained, and which are not built on the investments made by the Syndicat or its members. That court held that, although the right to use vegetable carbon is conferred only on cheese with the PDO ‘Morbier’, in order to comply with United States legislation, Société Fromagère du Livradois had to replace it with grape polyphenol, and therefore the two cheeses cannot be likened as a result of that feature. Noting that Société Fromagère du Livradois had claimed other differences between the Montboissié and the Morbier cheeses relating, inter alia, to the use of pasteurised milk in the former and raw milk in the latter, the court concluded that the two cheeses were distinct and that the Syndicat was seeking to extend the protection of the PDO ‘Morbier’ for commercial interests, which was unlawful and contrary to the principle of free competition.

The Syndicat appealed on a point of law against the judgment of the Court of Appeal, Paris before the referring court, the Court of Cassation, France. In support of its appeal, it submits, first, that a designation of origin is protected against any practice liable to mislead the consumer as to the true origin of the product and that in holding, however, that only the use of the name of the PDO is prohibited, the Court of Appeal, Paris infringed Article 13 of Regulation No 510/2006 and the same article of Regulation No 1151/2012. The Syndicat submits, next, that by merely stating, first, that the features that it relied on related to a historical tradition and were not dependent on the investments made by the Syndicat and its members and, secondly, that the ‘Montboissié’ cheese marketed since 2007 by Société Fromagère du Livradois was different from ‘Morbier’ cheese, without investigating, as requested, whether Société Fromagère du Livradois’ practices, in particular copying the ‘cinder line’ feature of Morbier cheese, were liable to mislead the consumer as to the true origin of the product, the court of appeal’s decision had no legal basis in the light of that legislation.

For its part, the Société Fromagère du Livradois maintains that the PDO protects products from a defined region, which alone can claim the protected designation, but does not prohibit other producers from producing and marketing similar products, provided they do not give the impression that they are covered by the designation in question. It is to be inferred from national law that any use of the sign constituting the PDO to designate similar products which are not entitled to that designation, either because they do not come from the defined area or because they come from it without having the required properties, is prohibited, but that it is not prohibited to market similar products, provided that such marketing is not accompanied by any practice liable to cause confusion, in particular by the misuse or the evocation of that PDO. It also argues that a ‘practice liable to mislead the consumer as to the true origin of the product’, within the meaning of Article 13(1)(d) of Regulation No 510/2006 and the same article of Regulation No 1151/2012, must necessarily focus on the ‘origin’ of the product. It must therefore be a practice which causes the consumer to think that the product he or she is encountering is the PDO product in question. It considers that that ‘practice’ cannot result merely from the appearance of the product in itself, without any indication on its packaging referring to the protected origin.

The referring court states that the appeal before it raises the novel question of whether Article 13(1)(d) of Regulation No 510/2006 and the same article of Regulation No 1151/2012 must be interpreted as prohibiting only the use by a third party of the registered name or whether it must be interpreted as also prohibiting any presentation of the product which is liable to mislead the consumer as to its true origin, even if the registered name has not been used by the third party. Noting in particular that the Court has never ruled on that question, it considers that there is doubt as to the interpretation of the expression ‘other practice’ in those articles, which constitutes a particular form of infringement of a protected designation if it is liable to mislead the consumer as to the true origin of the product.

The question therefore arises, according to the referring court, as to whether the reproduction of physical characteristics of a product protected by a PDO may constitute a practice that is liable to mislead the consumer as to the true origin of the product, as prohibited by Article 13(1) of the regulations cited above. That question amounts to determining whether the presentation of a product that is protected by a designation of origin, in particular the reproduction of the shape or the appearance which are characteristic of it, is capable of constituting an infringement of that designation, despite the fact that the name has not been reproduced.

In those circumstances, the Court of Cassation decided to stay proceedings and to refer the following question to the Court:

‘Must Article 13(1) of Regulation No 510/2006 … and Article 13(1) of Regulation No 1151/2012 … be interpreted as prohibiting solely the use by a third party of the registered name, or must they be interpreted as prohibiting the presentation of a product protected by a designation of origin, in particular the reproduction of the shape or the appearance which are characteristic of it, which is liable to mislead the consumer as to the true origin of the product, even if the registered name is not used?’

The Court’s decision:

Article 13(1) of Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs and Article 13(1) of Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs must be interpreted as meaning that they do not prohibit solely the use by a third party of a registered name.

Article 13(1)(d) of Regulation No 510/2006 and Article 13(1)(d) of Regulation No 1151/2012 must be interpreted as prohibiting the reproduction of the shape or appearance characterising a product covered by a registered name where that reproduction is liable to lead the consumer to believe that the product in question is covered by that registered name. It is necessary to assess whether such reproduction may mislead the European consumer, who is normally informed and reasonably observant and circumspect, taking into account all relevant factors in the case.

The taste of food is not copyrightable according to the EU Court

The European Court has ruled in the case C‑310/17 Levola Hengelo BV v Smilde Foods BV. This case concerns the issue whether the taste of food is copyrightable under the EU law. The case has the following background:

‘Heksenkaas’ or ‘Heks’nkaas’(‘Heksenkaas’) is a spreadable dip containing cream cheese and fresh herbs, which was created by a Dutch retailer of vegetables and fresh produce in 2007. By an agreement concluded in 2011 and in return for remuneration linked to the turnover to be achieved by sales of Heksenkaas, its creator transferred his intellectual property rights over that product to Levola.

A patent for the method of manufacturing Heksenkaas was granted on 10 July 2012.

Since January 2014 Smilde has been manufacturing a product called ‘Witte Wievenkaas’ for a supermarket chain in the Netherlands.

Levola took the view that the production and sale of ‘Witte Wievenkaas’ infringed its copyright in the ‘taste’ of Heksenkaas and brought proceedings against Smilde before the Gelderland District Court, Netherlands.

After stating that, from its point of view, copyright in a taste refers to the ‘overall impression on the sense of taste caused by the consumption of a food product, including the sensation in the mouth perceived through the sense of touch’, Levola asked the Rechtbank Gelderland (Gelderland District Court) to rule (i) that the taste of Heksenkaas is its manufacturer’s own intellectual creation and is therefore eligible for copyright protection as a work, within the meaning of Article 1 of the Copyright Law, and (ii) that the taste of the product manufactured by Smilde is a reproduction of that work. It also asked that court to issue a cease and desist order against Smilde in relation to all infringements of its copyright and, in particular, in relation to the production, purchase, sale, supply or other trade in the product known as ‘Witte Wievenkaas’.

By judgment of 10 June 2015, the Gelderland District Court held that it was not necessary to rule on whether the taste of Heksenkaas was protectable under copyright law, given that Levola’s claims had, in any event, to be rejected since it had not indicated which elements, or combination of elements, of the taste of Heksenkaas gave it its unique, original character and personal stamp.

Levola appealed against that judgment before the referring court.

The latter considers that the key issue in the case before it is whether the taste of a food product may be eligible for copyright protection. It adds that the parties to the main proceedings have adopted diametrically opposed positions on this issue.

According to Levola, the taste of a food product may be classified as a work of literature, science or art that is eligible for copyright protection. Levola relies by analogy, inter alia, on the judgment of 16 June 2006 of the Supreme Court of the Netherlands, Lancôme (NL:HR:2006:AU8940), in which that court accepted in principle the possibility of recognising copyright in the scent of a perfume.

Conversely, Smilde submits that the protection of tastes is not consistent with the copyright system, as the latter is intended purely for visual and auditory creations. Moreover, the instability of a food product and the subjective nature of the taste experience preclude the taste of a food product qualifying for copyright protection as a work. Smilde further submits that the exclusive rights of the author of a work of intellectual property and the restrictions to which those rights are subject are, in practical terms, inapplicable in the case of tastes.

The referring court notes that the Court of Cassation, France has categorically rejected the possibility of granting copyright protection to a scent, in particular in its judgment of 10 December 2013 (FR:CCASS:2013:CO01205). There is therefore divergence in the case-law of the national supreme courts of the European Union when it comes to the question –– which is similar to that raised in the case in the main proceedings –– as to whether a scent may be protected by copyright.

In those circumstances, the Regional Court of Appeal, Arnhem-Leeuwarden, Netherlands decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  (a)  Does EU law preclude the taste of a food product — as the author’s own intellectual creation — being granted copyright protection? In particular:

(b)  Is copyright protection precluded by the fact that the expression “literary and artistic works” in Article 2(1) of the Berne Convention, which is binding on all the Member States of the European Union, includes “every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression”, but that the examples cited in that provision relate only to creations which can be perceived by sight and/or by hearing?

(c) Does the (possible) instability of a food product and/or the subjective nature of the taste experience preclude the taste of a food product being eligible for copyright protection?

(d) Does the system of exclusive rights and limitations, as governed by Articles 2 to 5 of Directive [2001/29], preclude the copyright protection of the taste of a food product?

(2)  If the answer to question 1(a) is in the negative:

(a)  What are the requirements for the copyright protection of the taste of a food product?

(b)  Is the copyright protection of a taste based solely on the taste as such or (also) on the recipe of the food product?

(c)   What evidence should a party who, in infringement proceedings, claims to have created a copyright-protected taste of a food product, put forward? Is it sufficient for that party to present the food product involved in the proceedings to the court so that the court, by tasting and smelling, can form its own opinion as to whether the taste of the food product meets the requirements for copyright protection? Or should the applicant (also) provide a description of the creative choices involved in the taste composition and/or the recipe on the basis of which the taste can be considered to be the author’s own intellectual creation?

(d) How should the court in infringement proceedings determine whether the taste of the defendant’s food product corresponds to such an extent with the taste of the applicant’s food product that it constitutes an infringement of copyright? Is a determining factor here that the overall impressions of the two tastes are the same?’

The Court’s decision:

Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as precluding (i) the taste of a food product from being protected by copyright under that directive and (ii) national legislation from being interpreted in such a way that it grants copyright protection to such a taste.

Turkish cheese sticks cannot be a 3D trademark in the EU

music-1262026_960_720The General Court of the European Union has ruled in case T‑572/19,  Muratbey Gida Sanayi ve Ticaret AŞ v EUIPO. It concerns an attempt for registration of the following EU 3D trademark for the shape of cheese sticks in class 29 – milk products:

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The EUIPO refused the registration with the argument that it is not distinctive. The Turkish applicant claimed that the shape was novel, original and unique, offered in the market for the first time by him. Because of this the company won a World Dairy Innovation Award 2018.

The Court disagreed. Novelty and originality are not criteria for assessment of the distinctive character of a sign. The award could be a factor but only if it was based on a consumer perception.

According to the Court, other producers were offering similar products too because of which the shape of this cheese is not distinctive enough to be registered as a trademark.

Source: WIPR.