EU General Court issues mixed decision in bakery TM case
The EU General Court yesterday annulled part of an earlier decision in a trademark dispute centring on bakery-related trademarks.
At issue was the EU trademark ‘Fermin’, which France-based Lesaffre et Cie applied for in 2012. The company sought protection for goods and services in classes 1 and 30, including “bakery improvers for industrial and craft use” and “flour and preparations made from cereals, bread, pastry and confectionery, ices”.
Italian company AB Mauri Italy opposed the mark based on its earlier international and Benelux trademarks for ‘Fermipan’, both registered in classes 1 and 30. Those marks include “chemicals and biochemical products for artisanal use for preparing and improving bakery and pastry products”, and tea and coffee, in their descriptions.
AB Mauri said there would be a likelihood of confusion between the ‘Fermin’ mark and its own marks, and their respective protected goods and services.
In October 2016, the European Union Intellectual Property Office’s (EUIPO) Opposition Division ruled that the word element ‘Fermipan’ presented a high degree of visual and phonetic similarity with ‘Fermin’, but that it was impossible to undertake a conceptual comparison as the two word signs have no meaning.
It added that some of the applied-for goods, including flour, yeast and yeast extracts, were similar to “yeast” covered by the earlier marks, so the board partially upheld the opposition in this regard. However, it rejected the opposition in relation to the remaining goods, including bread additives and aromas, and aromatic preparations for food.
On appeal from both parties, the Fourth Board of Appeal ruled on the case in December 2017. It annulled the opposition for numerous goods in class 30, namely, “mixes for bakery products; bakery mixtures (ready-to-use bread mixes); yeast-based preparations for pastries and pizza dough”.
But it also annulled the earlier decision to reject the opposition for some goods in class 1, including bakery improvers for industrial and craft use, and bread additives, and therefore upheld the opposition in this respect. The board dismissed the remainder of the appeal.
At the General Court, AB Mauri asked it to annul only the part of the Fourth Board of Appeal’s ruling that rejected the opposition for the following goods in class 30: “mixes for bakery products; bakery mixtures (ready-to-use bread mixes); yeast-based preparations for pastries and pizza dough.”
In its decision yesterday, November 22, the General Court did annul the earlier ruling centring on these goods on appeal.
The court said that the board had been wrong to conclude that there is no similarity between the contested goods and “yeast”.
“It follows from the foregoing considerations that the Board of Appeal could not, on the sole ground that the contested goods and ‘yeast’ were dissimilar, conclude that there was no likelihood of confusion,” the court added.
Although the court dismissed the remainder of the appeal, it ordered the EUIPO to pay AB Mauri’s costs.
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