De’Longhi fails to convince EU court in TM case
The EU General Court yesterday sided with the European Union Intellectual Property Office (EUIPO), dismissing a trademark appeal from Italian appliance maker De’Longhi.
In June 2016, De Longhi Benelux (a subsidiary of De’Longhi) applied to register ‘Cooking Chef Gourmet’ for classes 7 and 11, covering cooking appliances such as food mixers.
However, an examiner rejected the application, a decision that De’Longhi—which acquired British appliance maker Kenwood in 2001—appealed against.
In July 2017, the EUIPO First Board of Appeal dismissed the appeal, after concluding that the mark was inherently devoid of distinctive character.
The appeal board had restricted its analysis to the English-speaking part of the EU and noted that the relevant public consisted of both the general public (who were reasonably well informed) and the specialised public in the restaurant sector.
It also noted that the meaning of each word element was laudatory and commonly used to describe food and drink, so they wouldn’t be perceived as an indication of commercial origin.
Again, De’Longhi appealed against the decision, arguing that the appeal board had erred in three assessments: distinctive character, level of attention of the relevant public, and distinctive character associated with the reputation of De’Longhi’s earlier mark ‘Chef’.
On the first argument, De’Longhi contended that the board had failed to analyse the overall impression given by the applied-for mark, which it argued has distinctive character.
“Given the characteristics of the goods designated by the mark applied for, whose use is associated with cooking, the word sign ‘Cooking Chef Gourmet’ will be perceived immediately by the relevant public as a laudatory or promotional reference to the qualities and purpose of the goods concerned,” said the General Court yesterday, October 9.
The court added that while the combination of the word elements differs from ordinary English grammatical use, the public would not need to make any “particular effort” to understand the meaning of the sign.
According to the court, De’Longhi’s second argument on the level of attention was unfounded and was therefore rejected.
On the third plea, De’Longhi argued that the applied-for mark already has distinctive character because of the registration of ‘Chef’, which has been in use since the 1950s.
“According to the applicant, since the mark applied for is a variant of the earlier mark ‘Chef’, the relevant public is capable of attributing the mark applied for directly to the applicant and of identifying the commercial origin of the goods concerned,” explained the court.
However, the court didn’t accept this argument, finding that because De’Longhi didn’t rely on distinctive character acquired through use before the EUIPO, the issue was irrelevant to the dispute.
“Second, and in any event, the earlier registration on which the applicant bases its argument concerns the word sign ‘Chef’, namely a sign which differs from the sign which forms the subject matter of the present action, which also includes the word elements ‘cooking’ and ‘gourmet’,” added the court.
It concluded that because of the differences, the earlier registration can’t affect the lawfulness of the appeal board’s finding.
De’Longhi was ordered to pay costs.
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