Mixed bag for Lidl in two TM cases
Budget retailer Lidl received mixed news at the European Union Intellectual Property Office (EUIPO) last week after it backed the company’s attempt to revoke a trademark, but only partly dismissed an opposition to Lidl’s own mark.
On Wednesday, September 12, the EUIPO handed down the two decisions.
It held that a trademark owned by Spain-based Horno del Espinar can be revoked and that Lidl’s trademark, which had been opposed by Horno del Espinar, can be registered for certain goods.
In 2008, Lidl applied to register a trademark featuring the word ‘Castello’ in a red shape, for classes 29, 30 and 31, to cover goods such as baking ingredients, fresh fruit and pasta.
That same year, Horno del Espinar opposed the mark, citing four of its own trademarks.
One of the marks, EU number 4,199,907, featured the word ‘Castelló’ (with an accent) in a red oval. It covered classes 30, 35 and 39.
Four years later, in August 2012, the EUIPO’s Opposition Division requested that Horno del Espinar provide evidence of the renewal of two of its trademarks. While the Spanish company submitted the evidence, the EUIPO didn’t send the documents to Lidl.
After the Opposition Division upheld the opposition and refused registration of Lidl’s mark, Lidl filed a notice of appeal. The EUIPO’s Second Board of Appeal dismissed the appeal.
In May 2015, the EU General Court confirmed that there was a likelihood of confusion between Lidl’s trademark and one earlier mark. However, the court annulled the appeal board’s decision because the EUIPO had failed to submit evidence to Lidl.
The case was remanded to the Fourth Board of Appeal but, because of various revocation requests that Lidl filed against the earlier trademarks, the proceedings were suspended until August 20, 2018.
One of these revocation requests covers the ‘907 trademark, which Lidl had sought to revoke for non-use in 2015.
In November 2017, the EUIPO’s Cancellation Division had revoked the trademark for all goods with the exception of ‘pastries’ in class 30.
On September 12, the EUIPO’s Board of Appeal revoked the trademark with respect to pastries.
The board, in its revocation decision, said: “The manifest lack of logic to maintain the EUTM for goods which are neither the used ones (madeleines, brioches, etc) nor the registered ones (preparations made from cereals) escaped the attention of the Cancellation Division.”
On the same day, the Board of Appeal handed down its decision on the Lidl trademark, rejecting Horno del Espinar’s opposition with respect to frozen and fresh fruit, vegetables, salt and pasta.
However, the opposition was successful with respect to a range of goods in classes 29, 30 and 31.
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