In a decision where the General Court scored one for the little guy against big hitter Nestlé, we are reminded that it is essential that evidence submitted to prove reputation relates to the correct mark, and that the whole of a trademark is greater than the sum of its parts (Amigüitos pets & life SA v European Union Intellectual Property Office (EUIPO) (Case T-40/19)).
Background
On 28 April 2016 Amigüitos pet and life SA filed an application for a variety of animal-related goods in Classes 5 and 31 to protect a figurative mark containing the word element ‘the only one by alpha spirit wild and perfect’ in a black square, together with a stylised ‘alpha’ in red.
On 21 September 2016 Société des Produits Nestlé SA filed opposition No B002775339 on the grounds of:
- likelihood of confusion (Article 8(1)(b) of Regulation 2017/1001) based on its earlier EU registration No 12460275 for the word mark ONE in Class 31 for 'foodstuffs for animals'; and
- reputation in the ONE mark (Article 8(5) of the regulation).
The Opposition Decision of the EUIPO viewed the dominant element of the application as being ‘the only one’. In comparison with the earlier mark ONE, the Opposition Division found in favour of Nestlé on both grounds, and rejected the application for all goods except 'trace elements (preparations of-) for human use' in Class 5 and 'flowers' in Class 31.
Amigüitos appealed this decision on 7 February 2018, arguing that the marks were not similar, that parts of the contested goods were not similar, and that enhanced distinctiveness and reputation of the earlier mark had not been proven. The Fourth Board of Appeal of the EUIPO dismissed the appeal.
General Court’s decision
Amigüitos applied to the General Court for the annulment of the Fourth Board of Appeal’s decision in its entirety. The court found in Amigüitos’ favour, finding no likelihood of confusion, and that the evidence provided by Nestlé failed to establish a reputation in its ONE mark.
The likelihood of confusion
In analysing the likelihood of confusion between the marks, the court determined differently from the EUIPO in that:
- the dominant elements of the application were ‘the only one by α alpha spirit’; and
- the relevant public of the European Union would likely have an understanding of the element ‘the only one’ at the very least, and would not focus simply on the ‘one’ element of the mark as submitted by Nestlé and the EUIPO.
The court resolved that the signs at issue were visually and conceptually different, with only a low degree of phonetic similarity, and that these differences would preclude consumers from believing that the goods at issue, when sold under the marks at issue, come from the same undertaking or from economically linked undertakings. Therefore, there was no likelihood of confusion.
Evidence of reputation
In attempting to establish reputation of its earlier registration for ONE, Nestlé filed substantial evidence showing use of the ONE mark together with its PURINA mark across a number of member states. Nestlé argued that the two are separate marks used together, with PURINA being an 'umbrella' mark. The EUIPO agreed: ONE always appears as the larger element, and consumers would therefore perceive the mark as simply ONE.
Amigüitos and the court disagreed. All of the evidence put forward showed both PURINA and ONE together, never ONE in use on its own, thus establishing a reputation in the mark PURINA ONE but not in the earlier mark ONE. The court confirmed that Nestlé therefore failed the test to establish reputation, and queried why the EUIPO did not raise the question of whether or not the reputation of the mark at issue could be established on the basis of the mark being presented in a different form.
Comment
While the bulk of the decision evaluated the EUIPO’s failure to view Amigüitos’ mark as a whole, or at the very least consider all of its dominant elements, the more salient takeaway for trademark owners and representatives alike is that, when presenting evidence to establish a reputation, they should make sure that it covers the right mark. To be able to rely on the reputation of a registered mark in proceedings, it must be used in its registered form in order to be effective.
If you would like to discuss any of the issues raised in this article or would like further information, please contact Jeremy Dickerson or your usual intellectual property team contact.
This article first appeared on WTR Daily, part of World Trademark Review, in January 2020. For further information, please visit World Trademark Review's website.