CJEU dismisses EUIPO appeal in Nestlé trademark dispute
The Court of Justice of the European Union (pdf) (CJEU) has ordered the EU Intellectual Property Office (EUIPO) to pay the costs of a trademark dispute involving Romania-based European Food and Nestlé.
The case began in November 2001 when Swiss-based Nestlé, the intervener, filed to register the EU trademark (EUTM) “ Fitness” with the EUIPO.
The trademark covered goods in classes 29, 30 and 32, which includes dairy products, eggs, fruit, vegetables, cereals and drinks.
Nestlé was successful in its application, and “Fitness” was registered as an EUTM under number 2,470,326 in May 2005.
European Food then claimed that the trademark was invalid and filed for an application declaring its invalidity in September 2011 on ground of the descriptiveness name “Fitness” in relation to the trademarked products .
However, the Cancellation Division rejected its application. Shortly afterwards, European Food filed an appeal with the EUIPO against the Cancellation Division, only for the appeal to be dismissed.
The Board of Appeal said that European Food had failed to provide sufficient evidence in contesting the trademark. The board also said that the “relevant point in time to which the evidence had to refer was the date of filing of the contested mark”, which was November 2001.
In August 2015, European Food brought an action for the annulment of the decision to the General Court.
European Food put forward three pleas in support of its case. The first related to the Board of Appeal’s refusal to take account of the evidence submitted; the second concerned the descriptiveness of the trademark; and the final plea related to the lack of distinctive character of the trademark.
The General Court annulled the decision and ordered the EUIPO to bear its own costs and to pay European Food’s.
The EUIPO appealed against the decision to the CJEU, alleging that the General Court was wrong to state that there are no rules setting a time limit for the production of evidence. Nestlé did not appeal.
However, the CJEU ruled that, in the “absence of time limits for the production of evidence in the context of an application for a declaration of invalidity”, the evidence could in fact be introduced at any time. This includes at the stage of appeal.
The CJEU dismissed the EUIPO’s appeal yesterday, January 24, and ordered it to pay European Food’s costs.
In December 2017, WIPR reported that Germany’s Federal Patent Court, the Bundespatentgericht, annulled a shape mark for Nestlé’s Nespresso coffee capsule.
Earlier that year, Nestlé lost an appeal against the rejection of the 3D shape of its four-finger KitKat chocolate bar as a trademark in the UK over concerns it had “no distinctiveness”.
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