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19 September 2018Trademarks

EU court overrules EUIPO in Lindt trademark dispute

The EU General Court today annulled a decision made by the European Union Intellectual Property Office (EUIPO) that had gone in favour of Lindt & Sprüngli in a trademark opposition.

In July 2015, Germany-based Eddy’s Snack Company applied to register the word sign ‘Eddy’s Snackcompany’ for goods in classes 29 and 30 related to food and drink, including chocolate and other confectionery.

That same year, Switzerland-based chocolate manufacturer Lindt opposed the application based on its earlier German word mark ‘Teddy’ and the international word mark ‘Lindt Teddy’. The German word mark is registered under class 30 for chocolate and related products.

Lindt’s opposition was based on class 30.

In October 2016, the EUIPO’s Opposition Division rejected the opposition on the ground that consumers would be able to distinguish Lindt’s earlier trademarks and the applied-for trademark. The division said that the marks had different meanings and that there was no likelihood of confusion.

However, in July 2017, the EUIPO’s Fourth Board of Appeal upheld an appeal made by Lindt. According to the board, the relevant public are in Germany and have an average level of attention, the goods covered in the marks are partly similar, and the opposing signs showed an average degree of visual and phonetic similarity.

The board added that the earlier marks and the applied-for mark are not conceptually different enough for the public to easily distinguish them.

Eddy’s Snack Company argued before the EU General Court that the board was wrong to find a likelihood of confusion between the earlier marks and the applied-for mark.

In its decision, the board decided that the dominant element in the applied-for mark is the word ‘Eddy’, which it said could be the name of a teddy bear given by its owner.

However, the General Court said that although the word ‘teddy’ denotes a stuffed plush bear in Germany, the board’s assessment that it might be given the name Eddy is pure speculation.

In its decision, the court said that the board did not take into account the addition of ‘s’ and the word ‘Snackcompany’ in the applied-for mark when it compared the marks’ visual, phonetic and conceptual similarity.

According to the General Court the signs show only a low degree of visual and phonetic similarity.

The court added that even if the relevant public’s level of attention is only average, the weak similarity of the signs in visual and phonetic terms does not suffice to create such a risk, since there is no conceptual similarity between the marks.

In addition, Eddy’s Snack Company argued that the board extended the subject matter of the opposition to also cover class 29, despite the opposition only covering class 30.

The General Court agreed with Eddy’s Snack Company’s claim that the board had overstepped its limitations and wrongly assessed the opposition in relation to class 29.

“Consequently, by unlawfully extending its decision on goods which were not the subject of opposition by Chocoladefabriken Lindt & Sprüngli, the Board of Appeal decided ultra petita and thus committed an error of law,” said the General Court.

The General Court annulled the board’s decision and ordered the EUIPO to pay its own costs and those incurred by Eddy’s Snack Company.

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30 July 2021   The German Federal Court of Justice has ruled that Swiss chocolatier Lindt & Sprüngli can trademark the gold foil wrapping of its chocolate bunnies.