Metalgial vs Meta. Parmigiano Reggiano wins over Kraft Parmesan Cheese

METALGIAL- META

In case T-192/21, Beta Sports LLC filed an application before the EUIPO, to register as a EUTM the word mark “META”, for “food supplements and dietary and nutritional supplements” (class 5 of the Nice Agreement). 

Laboratorios Ern SA. opposed this registration, pursuant to article 8.1.b) EUTMR (likelihood of confusion among the general public), on the basis of the earlier Spanish national trade mark “METALGIAL”, which was registered for goods in class 5, namely “Pharmaceutical and veterinarian preparations; Sanitary preparations for medical purposes; Dietetic substances adapted for medical use; Food for babies; Disinfectants; Preparations for destroying noxious animals; Fungicides; Herbicides”. 

First the opposition division, and then the Boards of Appeal of the EUIPO (BoA), did not appreciate any likelihood of confusion between the signs and the goods at stake, and therefore dismissed the action. 

Laboratorios Ern lodged an appeal before the General Court (GC), claiming once again that the similarity between the signs might cause confusion among the general public.

The Court reminded that the likelihood of confusion must be assessed globally, based on the relevant public’s perception of the signs, taking into account the different elements (visual, phonetical, conceptual) from the comparison of the signs and the similarity between the goods. 

As regards comparison of the signs at stake, the GC upheld the BoA’s decision, as they considered that the signs had a low visual and phonetical similarity, since the first four letters were identical, but not the rest of the word. Furthermore, no similarity was found at a conceptual level, since the term “METALGIAL” can be understood as a fantasy term. 

Concerning the comparison of goods and services, the Court confirmed that the “dietetic supplements” designated in the EUMT application of “META” were identical to the “dietetic substances adapted for medical use” of the earlier trade mark. 

Therefore, even if both marks designate the same (dietetic) products, the relevant public will not necessarily establish a link between them. The conceptual differences between the signs, and the low phonetical and visual similarity were sufficient for the Court to conclude that no likelihood of confusion can be appreciated. 

Moreover, the Court considered that the relevant public will show a higher level of attentiveness when purchasing dietetic products, given that these products may affect health.  

The Court concluded that registration could be granted for the word sign sought and that therefore the appeal must be dismissed. 

PARMIGIANO REGGIANO WINS OVER KRAFT PARMESAN CHEESE

The Ecuadorian Intellectual Property Office (SENADI) recently issued a decision stating that the term “Parmesan” for hard cheeses cannot be considered as a generic term outside the EU.

The company Kraft Foods Group Brands LLC was seeking to register the sign «Kraft Parmesan Cheese» as a trade mark in Ecuador. However, the “Consorzio del Formaggio Parmigiano Reggiano”, the Consortium in charge of protecting the PDO “Parmigiano Reggiano” all over the world, raised an opposition against this application. The “Consorzio” argued that the contested sign was extremely similar to the PDO and also that the American company was taking “unfair advantage of the reputation, quality and other characteristics of the protected designation of origin resulting exclusively from the geographical environment in which it is produced”.

The IP Office of Ecuador confirmed what was alleged by the Consortium and therefore, rejected the registration of the sign «Kraft Parmesan Cheese». 

Indeed, this action of preventing the registration of the above-mentioned sign will be beneficial to producers, as they will not see their incomes lowered, but also to consumers, as they will be safeguarded from purchasing a cheese which is not “Parmigiano Reggiano”. 

At the European level, in 2008, the Court of Justice recognised that the term “Parmesan” was the translation of the PDO “Parmigiano”, and therefore ruled that it was not allowed to commercialise under that term, hard and grated cheeses other than those covered by the PDO “Parmigiano Reggiano” in the territory of the EU.  

The importance of the recent decision adopted in Ecuador relies on the recognition of this PDO outside the territory of the EU. As already mentioned in one of our previous articles, even if a PDO is protected within the EU, this protection is not always applicable to third non-EU countries, due to the fact that bilateral agreements usually need to be signed.