Aldi toasts EU win over ‘regent’ trademark
Clash concerned French restaurant chain’s registration for a mark covering wine | Discounter’s earlier mark first registered 90 years ago | Proceedings shone spotlight on generic and distinctive terms in Germany.
Aldi has prevailed at the EU General Court in a dispute with an owner of a French restaurant chain over word marks covering alcoholic beverages.
The sixth chamber of the court delivered the decision today, May 10, upholding an earlier ruling by the EU Intellectual Property Office (EUIPO) Board of Appeal.
Background
The feud emerged in January 2020, when Aldi filed a notice of opposition to restaurateur Marc Vanhove’s 2019 trademark registration for ‘Bistro Régent’, granted to cover ‘wine’ in Class 33 of the Nice Classification trademarks.
Vanhove is the founder and president of the Bistro Régent group, and owns more than 140 restaurants in France.
Aldi’s opposition was based on the earlier German word mark ‘Regent Weinbrand’, first registered in 1933, and later renewed in 2012 to cover goods including ‘wine, spirits (beverages)’.
Later in May 2021, the EUIPO opposition division sided with the German discounter, prompting Vanhove to appeal.
But the EUIPO Board of Appeal dismissed this appeal in May 2022, finding that Aldi’s evidence was sufficient to prove genuine use of the earlier mark in connection with brandy.
The board found that there was a likelihood of confusion, and that this likelihood had to be assessed in relation to the German general public, where the goods bearing the earlier mark were sold by Aldi.
It further held that the goods at issue, namely wine and brandy were similar to a low degree, and that the earlier mark did not lack distinctiveness for the German public, but had an average degree of inherent distinctiveness.
Genuine use
On appeal, Vanhove insisted that the evidence produced failed to prove genuine use of the earlier mark, and that the element ‘weinbrand’, which is used with the earlier mark, alters its distinctive character.
Further, he argued that extracts from the home page of Aldi's website were undated and insufficient as evidence of use during the relevant period.
But the general court ruled today that the board correctly found genuine use of the earlier mark between October 2014 and October 2019.
With regard to the undated evidence, the court held that it could be taken into account and assessed alongside the rest of the evidence, because it can offer “proof of real and genuine commercial use of the mark”.
Vanhove also contended that the element ‘weinbrand’ used with the earlier mark in the form ‘Regent Weinbrand’ alters the distinctive character of that mark.
Further, he argued that the term, 'weinbrand' is markedly more dominant and forms a unit with the element ‘regent’.
Yet, the board held that the slight stylisation of the word ‘regent’ and the use of the colour red did not alter the distinctive character of the earlier word mark and, secondly, that the term ‘weinbrand’, meaning ‘brandy’ in German, lacked distinctiveness.
Weakly distinctive
Vanhove went on to suggest that the element ‘regent’ is descriptive with regard to wines and spirits in Class 33, and that the term refers to a variety of grape which is used in German regions and is known to the relevant German public.
He further claimed that the word element ‘bistro’, which contains three strokes above the letter ‘o’, is a fanciful word which evokes the term ‘bistro’ and that that element, placed at the beginning of the mark applied for, is distinctive with regard to wines.
But the board found that the most dominant and distinctive element in the mark applied for was ‘régent’, and took the view that its primary meaning was ‘reigning prince, monarch, crowned ruler’, and not the hybrid grape variety cultivated in German wine-producing regions.
Additionally, the board held that the word ‘bistro’ implied a small, usually simple restaurant and was not particularly distinctive with regard to wine.
French decisions ‘irrelevant’
The General Court agreed with the board, holding that since wines are generally served with food, the term ‘bistro’ is weakly distinctive with regard to wines.
The board had also rejected the applicant’s argument that the mark applied for would be understood as referring to a restaurant which was both popular and high-end, with a clear emphasis on French liberal culture and history.
The court agreed with the board that it was unlikely that the German general public would have such an in-depth knowledge of French culture and history.
Vanhove also pointed to decisions by the French courts and the Institut national de la propriété industrielle (National Institute for Industrial Property), which concluded that there was no likelihood of confusion in cases between marks containing the element ‘bistro regent’ and those composed of the term ‘regent’.
However, the court said that these decisions were irrelevant because the public in the present case concerned the German, and not the French, general public. The court dismissed the case and ordered Vanhove to bear his own costs and to pay those incurred by Aldi.
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