EU General Court rules over PLAN B trade mark - EU trade mark dispute: CHIQUITA QUEEN v. RED QUEEN

EU General Court rules over PLAN B trade mark

On 29 May, the General Court of the European Union issed a decision in a trade mark dispute between two Spanish book publishers in case T-777/22.

The dispute centers on the EU figurative mark N. 017887136, 'PLAN B', filed in April 2018 by Penguin Random House Grupo Editorial. In July 2022, another Spanish company, Ediciones Literarias Independientes, S.L. (ELI), filed an application with the EUIPO for a declaration of invalidity of the registered mark, in particular for Classes 9 and 16 of the Nice Classification, which cover goods such as e-book readers, e-books, paper and cardboard, printed matter and printed publications. The declaration of invalidity was based, on the one hand, on the bad faith of the applicant under Article 59(1)(b) of the EU Trade Mark Regulation and, on the other hand, on a 2019 judgment of the High Court of Justice of Madrid, which refused to register the ELI’s Spanish figurative mark no. 3641418, PLAN B.

In first instance, the Cancellation Division rejected the application for a declaration of invalidity. However, the Board of Appeal of the EUIPO found that the registration of Penguin Random House’s EU trade mark was contrary to the fair and established practices of the trade. It based its decision on the existence of the ELI's earlier Spanish figurative mark No 366342, 'Ediciones Plan B', which covered educational, entertainment and cultural services in Class 41 of the Nice Classification, the fact that it had already seen a trade mark application rejected for the same sign by the Spanish trade mark office after, ELI had filed an opposition, and that Penguin Random House knew that by applying to an EU trade mark they were going to hurt the interests of ELI by creating confusion within the mind of consumers. 

The General Court of the European Union had to decide whether the applicant had indeed acted in bad faith in applying for registration of the mark 'PLAN B' in the European Union and whether the registration of that mark infringed the defendant's rights. Bad faith is recognised in these where it can be shown that a party filed a trade mark application not in order to compete fairly in the internal market, but with the intention of harming a competitor in a manner not in accordance with honest practices. 

The General Court upheld the Board of Appeal's decision that the Penguin Random House had acted in bad faith when it applied for registration of the trade mark 'PLAN B' in the European Union. It found that the application reflected a disregard for the rights of third parties and a clear intention to take advantage of the reputation and recognition associated with the previously registered sign.

The Court considered that the registration of the trade mark 'PLAN B' and its similarity to the previously registered trade mark would cause confusion in the market and affect the ELI’s exclusive rights in Spain. 

EU trade mark dispute: CHIQUITA QUEEN v. RED QUEEN

In a recent judgment of 29 May 2024 (T-79/23), the General Court of the European Union ruled on a trade mark dispute concerning the EU trade mark "CHIQUITA QUEEN" and the earlier EU trade mark "RED QUEEN".

In June 2019, Chiquita Brands LLC applied to the European Union Intellectual Property Office (EUIPO) to register the word mark "CHIQUITA QUEEN" as an EU figurative mark (N. 018075274), covering fresh fruit in Class 31 of the Nice Classification. However, a Spanish company, Jara 2000 SL, filed an opposition based on the likelihood of confusion with its earlier EU figurative mark N.006783955, RED QUEEN, for fresh fruit in Class 31 and retail, wholesale and transport services for fresh fruit in Classes 35 and 39 respectively.

At first instance, the Opposition Division held that there was a likelihood of confusion between the marks at issue. The Board of Appeal of the European Union Intellectual Property Office (EUIPO) dismissed Chiquita’s appeal in its entirety, finding that the relevant public in this case, the average consumer with an average level of attention would be likely to be confused due to the identical nature of the goods covered by both marks and the average degree of visual, phonetic and conceptual similarity between the signs. In addition, the inherent distinctiveness of the earlier mark contributed to the likelihood of confusion for the Spanish-speaking public in the EU.

The General Court of the European Union had to determine whether there was a likelihood of confusion between the trade mark applied for, 'CHIQUITA QUEEN', and the defendant's earlier trade mark, 'RED QUEEN'.

First, the Court considered the distinctive and dominant elements of the marks at issue, highlighting the strong reputation of the word 'chiquita' in the European Union, particularly in relation to fresh fruit such as bananas. That reputation was considered to be decisive in determining the distinctiveness of the element 'chiquita' in the word mark 'CHIQUITA QUEEN',.

As regards the visual similarity between the marks, the element 'queen' was found to be more distinctive than the words 'chiquita' and 'red'. While it was accepted that the figurative elements of the earlier mark could reinforce the perception of the word 'queen', it was argued that the length and distinctiveness of the word 'chiquita' would make it more memorable to the relevant public. In that regard, the Court found that the marks were visually very different.

The Court held that the visual similarity between the two marks was weak: while “Chiquita” was the dominant visual elements of the “CHIQUITA QUEEN” mark given its length and its higher distinctive nature, while for the “RED QUEEN” figurative mark the “Queen” element is the dominant one. A similar line was followed to find that there was low phonetic and conceptual similarity between the two signs.

The General Court held that, despite certain similarities between the marks, the low degree of visual, phonetic and conceptual similarity did not give rise to a significant likelihood of confusion on the part of the relevant public. It noted that, although the goods covered by the marks were identical, the significant differences between their distinctive elements and the overall impression created by them were not such as to suggest that they came from the same source or from related undertakings. As a result, the General Court ruled in favour of the appellant and annulled the decision of the Board of Appeal of the EUIPO.