Nestlé on the losing side in koala TM case
The EU General Court has upheld an appeal from a Japan-based confectionery company after its trademark application was denied by the European Union Intellectual Property Office (EUIPO).
In 2007, Lotte applied for a Community mark depicting cartoon koala bears and confectionery snacks shaped as koala bears.
The mark was applied for in class 30 with regard to pastry stuffed with chocolate cream, chewing gum, chocolate, confectionery, pastries, cookies, crackers and ice cream.
In 2008, Nestlé filed an opposition based on its earlier 3D trademark depicting a box of confectionery covered in illustrations of koala bears. The mark also covers goods in class 30, including ice cream, pastry, chocolate and confectionery.
The EUIPO requested Nestlé prove genuine use of the earlier mark, which it did in the form of earlier invoices and catalogues.
The EUIPO’s Opposition Division upheld the opposition in 2010.
In the same year, Lotte lodged an appeal with the EUIPO against the Opposition Division’s decision. The Fourth Board of Appeal of the EUIPO upheld the appeal in 2012. According to the board, Nestlé did not prove that there was genuine use of the earlier mark.
The General Court annulled the decision in 2015, claiming that Nestlé had presented sufficient evidence that the earlier mark was in use.
Lotte responded by appealing against this decision to the Court of Justice of the European Union, but the court dismissed the appeal in 2016.
The case was referred back to the EUIPO’s Fifth Board of Appeal, which allowed the opposition in respect of the goods covered in the application.
According to the Fifth Board of Appeal, Nestlé had shown that the earlier trademark was in genuine use based on the number of products it sold in Germany using the mark.
Lotte then argued before the General Court that the Fifth Board of Appeal incorrectly assessed the proof of use of the earlier mark.
According to Lotte, the invoices didn’t show that the earlier mark was used or marketed during the relevant time period.
The General Court said that Nestlé did not sufficiently prove that the earlier mark was being used. As a result, the contested decision must be set aside “in so far as it is consistent with the opposition” to biscuits filled with cream, chocolate, and other confectionery named in class 30.
The General Court amended the contested decision and rejected the opposition. It ordered the EUIPO to bear its own costs and those incurred by Lotte, while Nestlé was told to pay its own costs.
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