Can TACO TUESDAY be a trademark in the US?

As it is well-known Taco is one of the most popular Mexican street food around the world including in the US. Taco consists of a tortilla topped with a filling such as meat, vegetables, sauce, etc.

A US company filed a trademark application for the phrase TACO TUESDAY for class 32 – beer, claiming that the sign is inherently distinctive for this product in particular.

The USPTO disagreed pointing out different pieces of evidence that show many restaurants in the US using this phrase for indicating a daily event where tacos and drinks, including beer, are offered to consumers.

What’s more, the website of the trademark’s applicant promotes beer as the ultimate pairing for tacos too.

Based on this the Office concluded that the phrase is descriptive of beers as well, and cannot serve as a source for a particular trade origin. Because of this, the mark was reduced entirely.

How such trademarks can receive protection?

Well if the word part is combined with graphics and colors it can be registered although in such cases it will be debatable to what extent the protection can be enforced in all cases because the word part will be still descriptive

Another option is if the applicant proves acquired distinctive character, that is to say, that consumers identify only one company as the owner of the sign.

Source: The TTABlog.


Lidl won a dispute over

The well-known German retailer Lidl won a domain name dispute before the WIPO Arbitration and Mediation Center.

The case concerns a registered domain name for by an individual. The domain hadn’t been used before the arbitration procedure with exception of a period when there was a website offering a survey dedicated to Lidl and redirecting to third parties websites.

The German company initiated a complaint wanting transfer of the domain to the company because of bad faith registration. In order for such a procedure to be successful the following cumulative factors are necessary:

(i) the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Lidl submitted many early registered trademarks such as:

– German registration No. 2006134 for LIDL registered on 11 November, 1991;
– German registration No. 30009606 for LIDL registered on 9 March, 2000;
– European Union registration No. 001779784 for 


 registered on 12 November, 2001;
– European Union registration No. 001778679 for LIDL registered on 22 August, 2002;
– European Union registration No. 013192752 for 


 registered on 27 February, 2015;
– International registration No. 748064 for LIDL registered on 26 July, 2000;
– International registration No. 974355 for LIDL registered on 9 May, 2008;

In addition, the company added a family of registered domain names that include lidl.

WIPO concluded that the domain name in dispute is confusingly similar to the earlier trademarks because they are included in the domain entirely. The rest of the domain elements .de and .website are generic and descriptive and are not able to create a difference.

According to Arbitrage, the domain registrant has no legitimate interest to use it because it associates with the business and geographical origin of Lidl as a company.

The domain was registered in bad faith because the registrant was aware of Lidl’s business taking advantage of its reputation.

Source: WIPO.

Aldi lost a trademark dispute before the General Court of the EU

The General Court of the European Union has ruled in case  T-527/20 Aldi v EUIPO.

Registration of European trademarks can be challenging sometimes. This is due not only because trademark protection in the EU has two levels – national and community but because there are linguistic and cultural differences between the Member States.

One example about such situation is an attempt by Aldi to register the following EU figurative trademark in classes 29 and 30:

The EUIPO refused to register this sign on absolute grounds – descriptiveness, Art. 7(1)(c) of Regulation (EU) 2017/1001.

The practice for protection of EU trademarks states that when one sign is descriptive for consumers even from one part of the Union, the sign will be refused.

In the case at hand, CUCINA means kitchen for the Italian speaking people. The fact that the same mark is registered and well-known in Germany cannot overcome this conclusion.

According to Aldi, the word is not descriptive because it indicates only the place where food dished are prepared. What’s more the mark consists of combination with graphics which is enough to create the necessary distinctiveness.

The EUIPO disagreed. The graphic representation was not distinctive too because the image looks like a cooking pot. A combination between two not distinctive or descriptive elements cannot turn the sign to be distinctive as a whole.

The decision was upheld by the General Court.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

KFC Japan won a hot trademark dispute

One interesting and a really hot trademark dispute in Japan has come to an end recently. Kentucky Fried Chicken Japan filed the following trademark application for RED HOT written in Japanese Katakana character:

The mark covered variety of goods in classes 29 and 30, including meat but with exception of seasonings and spices.

Against this mark an application was filed by the US company  French’s Food Company LLC based on the following earlier two marks for class 30 – seasonings and spices:

According to the US company, its marks had reputation in Japan for these goods and because of it there was a likelihood of confusion between the signs.

That wasn’t the opinion of the Patent Office, however. The opposition was dismissed in its entirety. The argument for this was the fact that seasonings and spices are not similar to the rest of the products in classes 29 and 30.

When it comes to the reputation of the earlier marks, the Office wasn’t convinced entirely. The fact that the mark was popular among specific dining restaurants  in the country is not enough a strong reputation to be established.

What’s more the presence of the distinctive work FRANK’S created the necessary distinguishing feature between the signs at hand.

Source: Masaki MIKAMI, Marks IP Law Firm.

Nestle lost another battle against IMPOSSIBLE BURGER

Nestlé’s battle against IMPOSSIBLE BURGER has faced another fail recently. As this blog informed last year, the District Court in The Hague imposed a ban on Nestle to use its brand INCREDIBLE BURGER finding it similar to the early registered EU mark IMPOSSIBLE BYRGER. This mark is used by the US company Impossible Foods for burgers made of meat substitutes.

As part of its defense strategy Nestle initiated an invalidation proceeding against the earlier mark before the EUIPO. According to the company, this mark is not distinctive for the relevant goods that it covers. For Nestle, this marks means a burger that one thought could not possibly exist. What’s more the sign can be perceived as a promotional, laudatory message.

The EUIPO disagreed and dismissed the invalidation in its entirety. According to the Office the phrase IMPOSSIBLE BURGER is not directly descriptive for burgers, on the contrary it posses some negative connotations. It is suggestive trademark and from this point of view can be protected.

The Office considered that Impossible would not related to an impossible product as a quality or other characteristics but as a qualifier of a specific noun. The consumers can perceive this phrase as an amusing  catchwords or pun. Form that perspective the mark is not either a promotional or laudatory  slogan.

This case is a good example for the so-called suggestive trademarks. They have a meaning but it can be found out by consumers only as a result of mental process, not directly. These trademarks can be registered although sometimes this can be tricky.

Source: Loretta Dashorst – Novagraaf за Lexology.

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.