Nestlé revives suit over pet food TM
Nestlé has secured a win in a trademark suit against pet products company Amigüitos Pets & Life, with the EU General Court ruling that a EU Intellectual Property Office (EUIPO) appeal board “misread” an earlier judgment.
The judgment, handed down on Wednesday, November 17, annulled an EUIPO Fifth Board of Appeal decision to reject Nestlé’s opposition to Amigüitos’ “The Only One” trademark.
The board erred by not addressing whether reputation could be established on the basis of a trademark registered in a different form when it ruled in favour of the pet product maker, said the General Court.
EUIPO erred
The Fifth Board of Appeal originally found that the inherent distinctiveness of Nestlé’s earlier “One” mark was normal, and agreed with an earlier General Court ruling that there was a “very low degree of similarity” between Nestlé’s and Amigüitos’ marks.
It also held that Nestlé’s “Purina One” mark had a reputation but not the earlier “One” mark, in line with a prior annulling judgment handed down by the General Court.
Nestlé argued that the Fifth Board of Appeal “misinterpreted” its power to re-examine by not examining whether the earlier mark could rely on the reputation of “Purina One”.
It argued that the General Court had “expressly recognised” that an earlier fourth board of appeal decision had not examined whether the reputation of the earlier mark could be established on the basis of the mark presented in a different form.
The General Court said: “For the purposes of complying with the annulling judgment, the Fifth Board of Appeal was required… to raise the question of whether that reputation could be established on the basis of a trademark registered in a different form and, in particular, to examine whether the elements which differentiated those two marks of the applicant enabled the relevant public to perceive the goods at issue as having the same origin.”
Consequently, it found that, by not addressing this, the Fifth Board of Appeal had erred.
Case background
Amigüitos filed an application to register an EU trademark with the EUIPO for a white, red and black figurative sign with the words “The Only One” for classes 5 and 31 of the Nice Agreement, which broadly cover dietary supplements and foodstuffs for animals.
In September 2016, Nestlé filed a notice of opposition based on an earlier EU word mark “One” which was registered on 6 May, 2014, in Class 31.
On December 7, 2017, the opposition division at the EUIPO found that the mark applied for was likely to take unfair advantage of or be detrimental to the distinctive character or reputation of the “One” mark.
Amigüitos sought to appeal the decision but the EUIPO’s Fourth Board of Appeal dismissed the action, leading Amigüitos to attempt to annul the dismissal in January 2019.
In an unpublished judgment, the General Court upheld two pleas put forward by Amigüitos, and annulled the Fourth Board of Appeal’s decision. The General Court held that the evidence that the applicant had provided before the EUIPO proved only that Nestlé’s “Purina One” mark had a reputation and not that the earlier “One” mark.
Nestlé attempted to appeal the decision but was denied by the Court of Justice of the European Union. The case was then remitted to the Fifth Board of Appeal, which later rejected Nestlé’s opposition in its entirety on 29 July, 2020.
Nestlé then relaunched opposition proceedings at the EU General Court in December 2020.
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