11 October 2019TrademarksRory O'Neill

EU General Court reverses EUIPO in TM win for Nestlé

Nestlé yesterday, October 10 succeeded in having a trademark ruling of the European Union Intellectual Property Office (EUIPO) overturned by the EU General Court.

The General Court ruled that the EUIPO had misinterpreted its prior decision on whether it could refuse to consider evidence that was submitted for the first time on appeal.

According to the General Court, the EUIPO still had discretion over whether to consider the evidence, but simply could not refuse to do so based on its late submission.

Nestlé registered a mark for “Fitness” at the EUIPO in 2005 in classes 29, 30, and 32, for goods including dairy products, cereals, water, juices, and sodas.

Last June, the EUIPO’s Second Board of Appeal cancelled the mark following an opposition from Romanian company European Food.

The Romanian company first sought to have the mark invalidated in 2011, but this request was rejected by the EUIPO’s cancellation division, as well as its Fourth Board of Appeal.

In that decision, the Fourth Board of Appeal refused to consider new evidence filed by European Food which it had not submitted during proceedings before the cancellation division.

The Romanian company appealed to the EU General Court, which in 2016 held that the EUIPO’s appeals board was wrong not to consider the evidence purely on the basis of its late submission.

The General Court’s 2016 judgment was subsequently upheld by the Court of Justice of the European Union (CJEU), which in January 2018 clarified that although the EUIPO’s initial reasoning was wrong, it was still entitled to use its discretion on whether to consider the evidence.

The General Court had found that the EUIPO’s reasoning that the evidence “did not have to be taken into consideration because of its late submission” was incorrect.

A separate EUIPO appeals board then reviewed the decision in light of the evidence, and subsequently cancelled the mark in June last year.

According to the EUIPO’s decision to ultimately cancel the mark, the relevant public would not perceive the term ‘fitness’ as an indication of the commercial origin of those goods, but rather as a reference to “their health-giving qualities and characteristics”.

The EUIPO’s Second Board of Appeal ruled that the mark “must be kept free” for competitors, as well as that it was a “purely informative message” and therefore lacked distinctiveness.

Legal wrangling between the parties continued when Nestlé appealed to the EU General Court, which yesterday reversed the EUIPO’s decision to cancel the “Fitness” mark.

The General Court has now ruled that the EUIPO misinterpreted its earlier judgment, which it said did not mandate the Second Board of Appeal to accept the evidence at issue.

In yesterday’s judgment, the court ruled that the 2016 decision “held merely that the Fourth Board of Appeal had erred in law in finding that the evidence produced before it for the first time was not to be taken into consideration because of its late submission”.

“In other words, the mere fact that the evidence was submitted for the first time before the Board of Appeal does not make it either belated or, on that account, inadmissible,” the ruling stated.

As the Second Board of Appeal misinterpreted the previous judgments as requiring it to consider the evidence, it therefore failed in its obligation to exercise discretion and state reasons for its decision, the General Court found.

The court ordered the EUIPO to pay costs to Nestlé.

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