EU trade mark dispute: Caprizza - EU trade mark dispute: mark representing a leaf

EU trade mark dispute: Caprizza

On 12 February, the General Court of the European Union (GCEU) ruled in case T-187/24 concerning the EU trade mark "Caprizza" owned by the Italian company Sirl Biif.

In 2022, the Italian company applied to the European Union Intellectual Property Office (EUIPO) for registration of the EU trade mark 018434530 for services in Class 43 of the Nice Classification, including temporary accommodation, food and beverage services, pizzerias, bar and café services, boarding of animals. However, the Spanish company Eddies Pizza, SL filed an opposition based on its earlier EU figurative mark 018337894 "Capizzi Gastropizza". The earlier mark covered services in Classes 39 and 43, including food and beverage delivery services, food preparation services and consultancy services in these fields.

At first instance, the Opposition Division partially upheld the opposition, except for animal boarding services. Similarly, the EUIPO Board of Appeal argued that there was a likelihood of confusion among the relevant Spanish-speaking public in the European Union under Article 8(1)(b) of the EUTMR.

The Italian company appealed to the General Court, which had to assess whether there was a likelihood of confusion between the marks at issue.

The Court noted that the services covered by the two marks were essentially identical or at least similar. It also considered that there was an average degree of similarity between them. Although there were phonetic differences the Court held that there was a high degree of similarity. The distinctive and common elements of the two marks, in particular 'cap' and 'izz', were identified as key factors which would attract the attention of the relevant public and increase the likelihood of consumer confusion.

The Board of Appeal assessed the perception of the term 'capizzi' by Spanish-speaking consumers and found that it was generally perceived as a fanciful word with no obvious meaning. Although a minority might associate it with a specific Italian municipality, the Court considered that interpretation to be irrelevant.

Furthermore, the Court pointed out that 'Gastropizza' lacked a strong distinctive character, which made it unlikely that consumers would focus on it when pronouncing the mark, meaning that the core of the comparison between the two marks had to be done focusing on the “Capizzi” term.. Consumers tend to remember the most distinctive elements of a mark and disregard the more generic ones. In this case, the lack of distinctiveness of 'Gastropizza' increased the likelihood of confusion with the mark applied for, 'Caprizza', as consumers would focus on the more visually and phonetically similar elements of both marks. As a result, the General Court dismissed the Italian company's appeal.

EU trade mark dispute: mark representing a leaf

On 12 February, the General Court of the European Union ruled in case T-434/23 related to an application for an EU figurative mark representing a leaf.

In 2017, Swedish company Essity Hygiene and Health AB, applied to the EUIPO for registration of an EU trade mark no. 016709305 consisting of a figurative sign representing a leaf. The application covered goods in Classes 16 and 21 of the Nice Classification. Class 16 included products such as paper, cardboard, paper towels, facial cleansing tissues, household paper and toilet paper. Class 21 included goods such as metal holders for towels, household utensils and containers, cookers (not of precious metal or coated) and paper dispensers.

At first instance, the examiner granted the application for the goods in Class 21, but refused it for the goods in Class 16. The EUIPO Board of Appeal later upheld this decision on the grounds that the trade mark applied for lacked distinctive character.

The Swedish company appealed to the General Court, which had to decide whether the mark lacked distinctive character, as the graphic element consisted of a very standard image of a leaf. 

The Court agreed with the EUIPO and concluded that the mark lacked distinctive character under Article 7(1)(b) of Regulation 2017/1001. It noted that the design would be perceived as a decorative feature, rather than an indicator of commercial origin, and therefore did not fulfil the essential function of a trade mark. In addition, the Court pointed out that the use of leaves as a symbol is widespread, particularly in the paper and board sector, which further reduces its distinctive character. The common representation of a leaf in similar products prevented the mark from standing out sufficiently to create an exclusive association with the applicant. As a result, the General Court rejected the appeal and confirmed that the mark did not meet the requirements for distinctiveness.