EUIPO decision on Italian coffee TMs invalidated
The EU’s General Court has invalidated the decision of the EUIPO to cancel registration of an Italian coffee producer’s trademarks, after finding that it had incorrectly assessed evidence submitted by a local competitor in the case.
In two related judgments, both issued today, June 6, the General Court ruled that, contrary to the EUIPO’s findings, Triggiano-based company Battista Nino Caffè had failed to prove use of its marks during the relevant period.
Torrefazione Caffè Michele Battista, also based in Triggiano, applied to register both word and logo EU trademarks for its “Battistino” brand in 2010. The marks were applied for in class 30, covering coffee.
Battista Nino bid to have the marks invalidated in 2015, citing its own “Battista” word mark and three figurative marks in class 30 covering coffee-related goods. Battista Nino’s marks were registered between the years 1999 and 2003.
In 2016, the EUIPO’s cancellation division sided with Battista Nino, partially invalidating Caffé Michele Battista’s word mark for coffee, tea, cocoa and coffee substitutes, and invalidating its logo mark entirely.
The cancellation division’s ruling was upheld by the EUIPO’s Fifth Board of Appeal in 2018. In its own decision, the Board of Appeal found that Battista Nino had sufficiently proven use of its own prior marks during two relevant periods; October 2006-October 2011; and November 2010-November 2015.
In its subsequent appeal to the General Court, Caffe Michele Battista argued that the appeals board had incorrectly deemed Battista Nino’s evidence sufficient to establish genuine use of its marks during the October 2006-October 2011 period. This marked the five year period before the contested Caffé Michele Battista marks were published for opposition.
In today’s ruling, the General Court ruled that the evidence submitted by Battista Nino, including sales invoices and business telephone directories, did not establish genuine use of the mark for the required duration of two full years between the relevant period.
The court also found that the appeals board had incorrectly considered sales invoices which were dated outside of the relevant period as evidence in its determination.
The appeals board’s error aside, the court also ruled that Battista Nino’s evidence was not strong enough to establish genuine use. The court noted that Battista Nino marketed its products across some Italian provinces, and sold its products in “low volume”. This demonstrated only “symbolic use” of the mark during the relevant period, the court found.
Costs were awarded to Caffè Michele Battista.
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