8 December 2020TrademarksSarah Morgan

UKIPO issues consolidated Goya Foods TM decisions

US food producer Goya Foods has achieved limited success in four consolidated trademark proceedings before the UK Intellectual Property Office (IPO), with the other party Goya GmbH emerging mostly victorious.

In a decision issued on December 2, the IPO concluded that both Goya Foods and health consultancy Goya GmbH had achieved measures of success in the series of trademark disputes, but the much greater balance of success was in favour of Goya GmbH.

In 2017, Goya GmbH applied for three UK trademarks—two for ‘Goya’ and one for ‘Goya Yoga’. The latter mark and one of the former ‘Goya’ trademarks reached registration, the other mark is still at the application stage.

US company Goya Foods opposed the trademark application and sought to cancel the other two registrations, relying on its ownership of three earlier-filed marks (two EU trademarks and a UK trademark).

Each of these trademarks were put to proof of use and Goya GmbH also attempted to revoke for non-use the earlier UK trademark relied on by the US company.

The revocation claim

Matthew Williams, on behalf of the IPO, first looked at Goya GmBH’s attempt to revoke Goya Foods UK trademark 2,278,362. The trademark covers goods in class 29, 30 and 32, including meat, fish, poultry, coffee, tea, and fruit juice.

The office partially revoked the trademark for a number of goods. Williams had found that evidence of genuine use in the UK hadn’t been shown in relation to goods such as meat, poultry, tapioca and vinegar.

The opposition claim

Goya Foods opposed the applied-for trademark ‘Goya’ (application number 3,242,636), which was filed July 2017. The trademark covers class 26, 38, 44, and 45, which includes telecoms, medical services and legal services.

The US producer contested artificial flowers in class 26, telecoms in class 38, and medical services; agriculture, horticulture and forestry services in class 44.

First, the IPO dealt with proof of use for Goya Foods’ three trademarks.

“I am content to frame a fair specification in respect of the EU marks, as covering all of the goods for which I have found genuine use in the UK (under the revocation proceedings), but supplemented by the EU evidence, to cover grains, tinned fish and coconut water,” said Williams.

After finding the applied-for mark identical, the IPO looked at the similarity between the contested goods and services, and those covered by Goya Foods’ trademarks.

In a loss for Goya Foods, the IPO found that none of the goods or services were similar, and dismissed the opposition on this ground. Goya Foods’ argument that the trademark shouldn’t be registered because it would take unfair advantage of its mark was also dismissed.

“Taken in the round the evidence falls hopelessly short of what would be needed to conclude that the marks benefit from a reputation among the UK general public,” said Williams, before adding that the marks didn’t have a reputation in the EU either.

The invalidity claims

Finally, Goya Foods applied for a declaration of invalidity against Goya GmbH’s two other trademarks.

The US producer succeeded to a limited extent, with the IPO ordering a partial cancellation of UK trademark 3,229,977, in relation to dietetic food and substances adapted for medical use; food for babies; dietary supplements for humans and services for providing food and drink.

Goya Foods’ attempt to invalidate the other trademark, 3,229,979, failed and the trademark remains intact.

“Across the four consolidated proceedings, both Foods Inc and GmbH have had various measures of success. However, the much greater balance of success is in favour of GmbH and it is entitled to a contribution towards its costs in defending the proceedings against it and in pursuing revocation of the earlier UK mark,” said Williams.

Goya Foods was ordered to pay Goya GmbH the sum of £2,350 ($3,139).

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