EU trade mark dispute: Blue and yellow oval mark for fresh fruit declared invalid - Eu trade mark dispute: Nestlé’s FITNESS

EU trade mark dispute: Blue and yellow oval mark for fresh fruit declared invalid

On 13 November, the General Court of the European Union ruled in case T-426/23 concerning the EU trade mark No. 007497191 owned by Chiquita Brands LLC, which is represented by a distinctive blue and yellow oval.

In 2020, Compagnie Financière de Participation filed an application for a declaration of invalidity of the EU trade mark with the EUIPO in respect of Classes 29, 30, 31 and 32 of the Nice Classification, which cover products such as meat and fish, confectionery and ice cream, fresh fruit and vegetables and fruit juice. At first, the Cancellation Division granted the application in its entirety, finding that the mark lacked distinctiveness under Article 7(1)(b) EUTMR. Although Chiquita Brands appealed the decision, the EUIPO Board of Appeal confirmed that the mark lacked distinctiveness for fresh fruit in Class 31. However, for the remaining goods, the Board overturned the Cancellation Division's decision, stating that no evidence had been provided to call into question the validity of the mark for those goods.

Chiquita Brands then appealed to the General Court, which had to determine whether the mark lacked distinctiveness. First, the Court noted that neither the shape nor the blue and yellow colour combination of the mark had the necessary inherent distinctiveness to identify the commercial origin of the products. The oval shape as well as the colour combination were considered to be a very common design.

Furthermore, Chiquita failed to prove that the mark had acquired distinctiveness through use throughout the European Union. The evidence submitted was limited to four Member States ( Belgium, Germany, Italy and Sweden) and did not reflect the market situation in other regions. In addition, the evidence included additional elements, such as the word "Chiquita", which made it difficult to attribute distinctiveness to the registered mark in particular.

As a result, the General Court concluded that the mark lacked inherent distinctiveness and had not acquired distinctiveness through use, thereby confirming its invalidity for fresh fruit. This decision is the latest example of how difficult it is to demonstrate acquired distinctiveness for relatively simple signs.

Eu trade mark dispute: Nestlé’s FITNESS

On 27 November, the GCEU ruled in case T-799/21 on a dispute regarding the EU trade mark No. 002470326, FITNESS, owned by the Swiss company Société des produits Nestlé SA.

In 2011, Nestlé applied to the European Union Intellectual Property Office (EUIPO) to register the EU trade mark FITNESS as a word mark for products in Classes 29, 30 and 32 of the Nice Classification, including dairy products, cereals and cereal preparations, mineral and carbonated waters and fruit drinks. However, in 2011, European Food SA filed an application for invalidity of the mark in question for all the products it covered, based on Articles 7(1)(b) and (c) EUTMR, which refer to lack of distinctiveness and descriptiveness.

During the proceedings, European Food SA submitted additional evidence at later stages, but this was rejected by the EUIPO on the grounds that it had been submitted late and that there was no "new factor" to justify its inclusion. After years of litigation, including appeals and contrary judgments, the case was referred back to the General Court.

Regarding the flexibility in admitting late evidence, the Court highlighted that Article 76(2) of Regulation (EC) 207/2009 allows the EUIPO to accept late evidence if it is relevant to the case and the delay is justified. In this case, the Court held that the evidence submitted was relevant to the assessment of the descriptiveness of the mark "FITNESS" and therefore its automatic rejection without considering its relevance was an error. Furthermore, the Court pointed out that the Board of Appeal had acted too restrictively by rejecting the evidence without considering whether it provided relevant information for the invalidity of the mark.

Another important aspect of the decision is the correction of the criteria regarding the need for a "new factor" in order to accept late evidence. The EUIPO had required that late evidence be supported by a new fact or circumstance. However, the Court stated that the Regulation does not make this requirement mandatory and that the Board of Appeal should have focused on assessing the relevance of the evidence and the reasons for its late submission. In this context, the Court stressed that, while legal certainty is crucial, it must be balanced against substantive justice. Although the evidence was submitted late, its relevance was such that it could have affected the final outcome of the case. Moreover, the Court acknowledged that the reasons for the late submission, based on the previous conclusions of the Cancellation Division, were reasonable and should have been taken into account.

Lastly, the Court pointed out that in invalidity proceedings, the public interest in ensuring free competition must prevail and descriptive marks should not be protected. Therefore, the EUIPO has a responsibility to evaluate all evidence, including late submissions, in order to ensure a fair decision. As a result, the EUIPO will have to re-examine the case, taking into account the evidence submitted by European Food SA, which could have an impact on the future of Nestlé's "FITNESS" trade mark.