20 January 2020

"Sweet Brands" – Current Case Law At German And European Level

SKW Schwarz


SKW Schwarz
"A brand is the most valuable property in the world: a corner in people's memories" (Sir John Hegarty). As in real estate, that space is in high demand – more and more signs are courting...
European Union Intellectual Property
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1. Decisions on registrability

"A brand is the most valuable property in the world: a corner in people's memories" (Sir John Hegarty). As in real estate, that space is in high demand – more and more signs are courting attention. Pervading requires a distinctive mark.

The collective memory, the trademark register, therefore contains only space for trademarks which fulfil their proper function: to indicate the identity of the origin of the goods and services designated. The trademark offices have become stricter, especially for "speaking" trademarks: They often reject them on the ground that the public merely understands them as a reference to the goods and not to the manufacturer.

1.1 Distinctiveness of word marks

The Federal Patent Court granted protection to the word mark VEGIPAN applied for in respect of bread and confectionery.1 The vagueness of the foreign-language term "PAN" (Spanish for "bread") – despite the addition of the abbreviation "VEGI" known in trade for vegetarian products – was not clearly and meaningfully supplemented. On the contrary, it was a grammatically incorrect combination of words from which the foreign word "pan" did not emerge without constraint. The sign could therefore not be regarded as devoid of all distinctive character.

The Norwegian word EKTE (in English: "genuine") was deemed sufficiently distinctive.2 Neither professional circles nor the average German consumer would understand the Norwegian term in its actual meaning. A possible lack of distinctive character abroad was not relevant for registration as a national trademark.

The PLOMBIR trademark, registered for dairy products and ice cream, was successfully challenged by a competitor at the General Court of the European Union (GC).3 The term means ice cream in Russian and was therefore merely descriptive of the goods claimed. According to the GC, relevant was the understanding of the Russian-speaking public within the EU.

Registration was also refused for the word Powerkitchen.4 The term was widely used in trade as a descriptive name for the preparation of particularly energy-rich dishes and could therefore merely serve as an indication that the goods on offer were suitable for the production of energy-rich dishes.

According to the Federal Patent Court, the word combination Sport Suppe ("Sport Soup") was devoid of distinctive character if it included goods which might be common substances or ingredients of a soup.5 The public would understand the term as an indication of the nature of soups or its ingredients if, because of their composition, they were particularly suitable for sports nutrition. On the other hand, the combination of words was sufficiently distinctive insofar as it included "dairy drinks and desserts" which were not normally associated with soup dishes.

The term Backgold ("Baking Gold") was also regarded as descriptive.6 The public would understand it as a mere indication that products labelled as such were high-quality bakery products or were used in the manufacture of such products. The word "gold" was used in a variety of ways to refer to the particular quality of a product in the sense of a value proposition. As an example, the court referred to formulations such as "Gilds the moment" (Ferrero Rocher) or "The gold of the Emerald Isle" (Kerry gold).

The application for registration of the word mark Bremer Osterwiese (Bremen Easter Meadow) was unsuccessful.7 According to the Federal Patent Court, the average public would associate the term with the "Bremer Volksfest" ("Bremen folk festival"), a nationally known local fair. The public would hence understand the term as a mere reference to goods offered for sale or marketed at or in connection with that particular local fair. The room for entrepreneurial creativity for event-related signs is hence very limited.

In the case of the word mark MYPROTEIN, the Federal Patent Court refused the registration on the grounds that no indication of origin could be taken from it. On the contrary, the public would understand the designation as an indication for protein-rich foodstuffs individually tailored to consumers, particularly due to the use of the customer approach "My ...," which was common in advertising.

According to the GC, the trademark Exxtra Deep by Intersnack also had a descriptive character for "preserved, dried and cooked fruit and vegetables" and was therefore not capable of being a trademark.8 The Board of Appeal of the EUIPO had initially found that the average consumer understood the sign only as an indication of the external shape and quality of the product with particularly deep grooves (so-called "wave cut"), which were a common feature of chips. The EUIPO had therefore cancelled the already registered trademark only in respect of "vegetable and potato products for snacking purposes produced or prepared by extrusion or pelleting and by other means". The applicant for cancellation, Pepsico, opposed this and also requested the deletion of "preserved, dried, cooked fruit and vegetables". The GC found that chips could also consist of dried vegetables and that the sign was therefore descriptive. As a result, the Board of Appeal also cancelled the sign for those goods.9

According to the Board of Appeal of the EUIPO, the word sign Bäckerkruste ("Baker's crust") was also devoid of distinctive character in relation to pastry, in particular bread.10 A term whose meaning was limited to a simple reference to a particular type of food with a "crust" that had been professionally processed by a baker was not registrable. However, the German Patent and Trademark Office registered the trademark for sandwiches.11

1.2 Word and figurative marks

The Federal Patent Court rejected the word and figurative mark application for Paletas. The Spanish expression for "popsicle" was at least sufficiently well known to German professionals in the food industry and had therefore to be understood as a merely descriptive indication of the goods.12 In the view of the court, the graphic exhausted itself in the display of the claimed goods and remains within the scope of usual advertising. Also adding a geographical reference "Paletas Berlin" could not help to reach registrability: A generally known geographical location was not capable of establishing the protectability of the sign.13

Hearts are displayed on countless products. It is therefore not surprising that Lidl failed to register the word and figurative mark For you in a simple lettering surrounded by a heart.14 The Board of Appeal of the EUIPO stressed that the sign "resembles a banal gift tag" and that the applied goods were suitable as gifts.

The EUIPO Board of Appeal also rejected the registration of a graphic illustration of the word combination Hoch Genuss ("Great Delight").15 The term merely advertised positive properties of the product. The figurative elements were, in view of the EUIPO, common and barely perceptible besides the word elements. Rather, the "stamp-like" logo had a purely decorative effect on the public and therefore only reinforced the perception of the mark as an indication of quality in the sense of a quality label.

DANISH BY DANISH CROWN was treated with little royalty – the EUIPO Board of Appeal confirmed the rejection of the application.16 In particular, the mark was deemed devoid of distinctive character by the Board, since the public would regard the sign either as directly linked to the Danish royal family or as an indication of quality that the goods were worthy of a king. Against that background, the Board of Appeal also considered that there had been an infringement of public order and a deception as to the geographical origin of the goods. Public order required the use of cultural symbols with a positive connotation to be limited. The applicant was unsuccessful in arguing that "Danish Crown" had already been registered 50 times in Europe as a trademark or corporate sign, including similar EU trademarks.

According to the Board of Appeal of the EUIPO, Golden Organic was perceived by the public as an indication that the goods were of excellent quality and organic.17 The simple design elements could not invalidate this impression as well, but seemed rather like an ordinary advertising medium.

The GC confirmed the decision to refuse registration of PRODUCED WITHOUT BOILING SCANDINAVIAN DELIGHTS ESTABLISHED 1834 FRUIT SPREAD for fruit spreads.18 Even the widespread indication "established (...)" at the beginning referring to the company foundation did not enable the public to identify the company behind it.

The Board of Appeal of EUIPO was unable to find that the applied sign Authentic Bakery Style / MADE EASY possessed distinctive character.19 The verbal elements of the sign were immediately understood as a reference to "authentic bakery products" which were easy to consume. Overall, the figurative elements were not sufficiently conspicuous or unusual to alter the sign's descriptive character.

1.3 Figurative marks

Two modifications of the typical Tegut logo without the lettering of the supermarket chain of the same name were rejected. According to the Federal Patent Court, the public would see a (price) tag or label in the rectangle with three white dots.20 The sign could not be seen as characteristic in account of its tilted position either, since there were already no reference points in the sign which would make the inclination apparent. Likewise, the Federal Patent Court saw a mere tag in the registration of the rectangle without dots.21

A complaint by HelloFresh GmbH against the refusal to register an image of a lime as a trademark was unsuccessful.22 The sign indicated, in relation to foodstuffs, that the goods in question were specifically intended for lemons or limes.

The EUIPO also rejected a figurative mark of Jacobs Douwe Egberts GmbH, showing a green cup.23 The consumer was confronted with an incredibly large variety of corresponding designs. The sign applied for did not differ significantly from the standard design of a cup.

1.4 Shape marks

Square, practical, ... registrable? The Federal Patent Court had to decide this question in a very lengthy procedure in order to register the naked packaging of Ritter Sport Schokolade as a shape mark.24

Background: Ritter Sport had already obtained trademark protection for the packaging of its square chocolate bars without imprint in 1995. The trademarks were then registered on the basis of acquired distinctive character. The Kraft Foods Schweiz Holding had taken successful action against the registration. The Federal Patent Court found that the contested design consisted merely of a (packaging) shape determined by the nature of the goods themselves.25 Such forms should not be monopolized for a competitor. In 2017, the Federal Supreme Court annulled the contested decision following the legal appeal of the trademark owner and referred the proceedings back to the Federal Patent Court. The Federal Patent Court therefore again had to deal with chocolate packaging. This time it had to examine whether the square shape conferred a substantial value on the mark, which conflicted with its protectability. However, since "chocolate bars" were almost exclusively produced and packaged in rectangular form, the square was merely a special shape of the rectangle and did not confer any advantage of use on the product over other packaging, the court found that the special shape did not play a significant role in creating value in that regard. Therefore, it was also deemed innocuous that the company advertised its products with the slogan "Square. Practical. Good." with the special form. Accordingly, the registration of that shape mark was maintained.

The GC takes the view that an amphora-like vessel can be distinctive and has therefore annulled the contrary decision of the EUIPO Board of Appeal in the Wajos case.26 In the present case, the "bead" of the receptacle of the mark applied for, which was unusual in the sectors concerned, gave it an unusual character. The mark was therefore sufficiently distinctive, particularly since the goods were sold in scale replicas of those containers and were thus marketed in a particularly recognisable manner.

1.5 Reputation through use

In the dispute over the registration of the 3D trademark for KitKat (Nestlé), the European Court of Justice (ECJ) confirmed a decision of the GC27 stating that the chocolate bar was not registrable.28 The question the court had to answer was by when a mark had acquired distinctive character through use with the result that the public understood it as an indication of origin. The ECJ ruled that the trademark owner had to prove that the trademark was "well established" in all EU member states, i. e. sufficiently well known. However, proof of distinctive character did not necessarily have to be provided individually for each Member State. On the contrary, it could already be substantiated if several Member States were grouped together in the same distribution network and, for strategic marketing reasons, treated as a single and uniform market. Nevertheless, the decision sets high hurdles for the registration due to an enforcement of the mark. Even the lack of recognition in a single country, such as Malta, leads in case of doubt to the conclusion that the trademark in the EU as a whole does not have acquired distinctive character.

2. Conflicts between trademarks

Once the hurdles to registration have been overcome, this does not mean that the path for the trademark is already clear. Trademark offices and courts are particularly occupied with conflicts with older trademarks. There is a likelihood of confusion with an earlier trademark if the consumer might believe that the goods in question originate from the same company or, if applicable, from economically connected companies. The courts focus on the understanding of an average consumer who is reasonably well-informed and reasonably observant and circumspect.

2.1 Likelihood of confusion of word marks

The proprietor of the word mark Naturherz failed with an opposition against the trademark NATUREX.29 The common features of the marks compared were essentially limited to one element which was not capable of protection. The immediately recognisable conceptual content of the earlier sign also overshadowed the phonetic similarities to such an extent that a likelihood of confusion was sufficiently neutralised.

An opposition of the trademark HELLO against the registration of Hello Cupcake was also unsuccessful.30 According to the Federal Patent Court, the word marks differed substantially in their overall impression due to the additional component "cupcake". Even in the case of goods such as cakes, that component did not lose its relevance due to its little distinctive character. The combination of the terms in order to form a consistent overall expression ("Hallo kleiner Kuchen"; in English: "Hello little cake") argued against a sole imprint by "Hello".

The Federal Patent Court confirmed the partial cancellation of the word mark Honeysun for certain goods in Class 31, including fruit and plants.31 With regard to the earlier identical mark Honeysun, registered inter alia for tea and vinegar, a partially only slight similarity of goods was sufficient. This was still applicable here, since tea could be made from forestry and garden products. Fruit, in turn, was used for fruit vinegar.

2.2 Likelihood of confusion of word and figurative marks

The Federal Patent Court did not see any likelihood of confusion between PURE  chocolate and the earlier word and figurative mark pure CHOCOLATE DRINK by Tchibo.32 The overall written and visual impression already differed significantly because of the basic shape – round versus rectangular – and the display of cocoa fruits in the opposing mark. Conceptually, the opposing mark was, in view of the court, merely descriptive and therefore can not give rise to a risk of confusion.

The Federal Patent Court did not find any likelihood of confusion between the word and figurative mark barösta kaffeebar and the earlier word mark Rösta by Norma either.33 Despite being distributed in Norma food markets the earlier mark was considerably less well-known than other coffee trademarks. With regard to the descriptive appeal of the mark, the court therefore classified "Rösta" as having a below-average distinctive character. The marks at issue were clearly distinguishable both visually and phonetically due to the recognisably different word lengths (five to seven letters and two to three syllables) and the strikingly different word beginnings. Conceptually, the court found a significant difference in the fact that the mark applied for did not refer to the process of "roasting" but rather to the profession of barista and espresso bars in general.

The Board of Appeal of the EUIPO stated that the mark applied for TIRABACI was not distinguishable for the consumer from the opposing trademark BACI.34 Indeed, the signs conceal different Italian terms: "baci" means kisses, whereas "tirabaci" designates a person who attracts kisses. However, parts of the public in the EU unaware of that meaning would assume that the goods bearing the trade marks come from the same company. With regard to the coincidence in the second part of the word "baci", the customary nature of sub-brands and the average consumer's attention, the marks were not sufficiently distinctive.

According to the Board of Appeal of the EUIPO there also consists a likelihood of confusion between the word and figurative marks Frostino and FRoSTA.35 Here, the principle applies according to which the public pays more attention to the word elements of word and figurative marks than to figurative elements. In Italy, for example, the English word "frost" is not part of the basic vocabulary, which is why "FRoSTA" does not only have slight distinctive character. The consumer might therefore consider the mark applied for, "Frostino", to be only a "special version" of the registered mark "FRoSTA" for certain goods. According to the Board of Appeal this was also supported by the fact that the ending "-ino" was used as a "miniaturization" in Italian.

A Russian trademark owner successfully intervened before the Board of Appeal against the registration of a similar figurative mark of a competitor. According to the board, the main characteristic of both signs was the figurative representation of the "Little Red Riding Hood" since the Russian characters were not understood by the public. Visually, the brands could be considered similar in terms of layout, colours and accessories such as basket and flowers, so that there was an "overwhelming" similarity. The inconspicuous word elements arranged sideways did not change this conception. In fact, the challenged mark gave the impression of a mere "modernization" of the earlier mark.36

The Board of Appeal of the EUIPO found that there was no likelihood of confusion between the earlier word mark Trader Joe's of Aldi Einkauf GmbH and the word and figurative mark applied for Potato Joe.37 Indeed, the goods were partly similar, such as potato chips and taco chips. Also, the differing elements "potato" and "trader" were only descriptive or slightly distinctive. Nevertheless, the concordance only in the word element "joe" was not sufficient to give rise to a likelihood of confusion. From the point of view of the public, "Potato Joe" and "Trader Joe" clearly depicted different persons or "sellers".

Haribo lost its case against the chocolate manufacturer Ludwig Schokolade concerning the registration of the word and figurative sign FR!ZZI because of its great similarity to the earlier mark FRITTIS.38 According to the Board of Appeal of the EUIPO, the signs were phonetically very similar: they had the same number of syllables, the same rhythm and a very similar emphasis. Also, the first syllable was pronounced the same and the second in a very similar way. Finally, they shared the sound of the letters "t", "i" and "s".

The Board of Appeal of the EUIPO found that the earlier word and figurative mark delikato by Aldi and the word mark DELCATO which was applied for were phonetically highly similar.39 Both the beginning of the word and the last two syllables were identical. The earlier trademark only had an additional syllable because of the additional "i". In any case, there was conceptual similarity for parts of the public who understand both signs as an allusion to the word "delicacy". Consequently, the Board of Appeal found that in principle there was a likelihood of confusion. However, the board denied the likelihood of confusion concerning the goods "wedding cakes" which registration was sought since there was no similarity with the savoury goods covered by the earlier mark.

Lindt's opposition based on its word mark Excellence against the registration of the word and figurative mark Eggcellence was rejected.40 Regarding confectionery, the visual appearance of marks was at the center of attention. The trademark applied for had very little similarity with the earlier mark due to the different word beginnings, which were particularly striking to the public, and therefore did not indicate likelihood of confusion.

While Intersnack had successfully filed an opposition based on its Kelly's trademark against the registration of the trademark Welly before the EUIPO in 2017, the company now had to take a defeat before the GC.41 Unlike the EUIPO, the Court did not identify any likelihood of confusion. The differences in the initial letters "w" and "K", the apostrophe "s" only given for the "Kelly's" trademark and the fact that the two words were very short and therefore easily remembered by the public spoke against similarity. In addition, the EUIPO considered the signs to be significantly different on a visual level.

2.3 Exploitation of trademark reputation

Coca-Cola prevailed before the EUIPO against its Syrian competitor Mitico for taking unfair advantage of the reputation of its trademarks. After the GC had already objected to a decision of the EUIPO in 2014 and had found a relevant similarity between the trademarks,42 the EUIPO Board of Appeal again dismissed Coca-Cola's action for exploitation of the trademark on the grounds that it was still unclear how the Master-Cola trademark would be used in the EU. Thus, it was not yet possible to establish any exploitation of the trademark reputation. The GC again overruled this decision and found that it had been taken advantage of the reputation of the well-known trademark.43 It was inevitable that the trademark, which had previously only been used commercially in the Arab world, would be associated with Coca-Cola. It was necessary to take into account how the product was marketed outside the EU in order to represent the prospective use of the sign in the EU. With regard to such use (see illustrations), the risk of taking advantage of the reputation of the Coca-Cola trademark was not only hypothetical, particularly since the proprietor of Master-Cola had not claimed to intend to use the trademark in a different way in the EU.

3. Conflicts with geographical indications and designs

In addition to purely trademark-related conflicts, there are further possible infringements that should be considered in the confectionery industry. Product names, for instance, may infringe geographical indications.

In 2012, the French Champagne Association brought an action against the use of Champagner Sorbet for ice cream arguing that it was infringing the protected geographical indication "Champagne". The Federal Court of Justice presented the question regarding the scope of protection of a protected geographical indication to the ECJ. The ECJ ruled that the use of "Champagner Sorbet" did not constitute unjustified exploitation if the ice cream was substantially characterized by a taste produced mainly by champagne.44 Accordingly, two conditions must be met: first of all, the product must taste like champagne, whereby a "wine product-like" taste is sufficient. Secondly, this taste must originate from champagne as an ingredient and not from food flavours.

The Federal Court of Justice ordered the Court of Appeal to make new findings on whether the ingredient champagne was flavour-determining for the ice-cream. If it was not, the use of the geographical indication was likely to be qualified as misleading. The Federal Court of Justice also clarified that the plaintiff, the French Champagne Association, had to prove that the ingredient champagne was not determining the taste of "champagne sorbet". In a second step, which might require the obtaining of an expert opinion, the origin of the taste had to be investigated.45

Finally, conflicts can also occur between trademarks and designs, so that not only trademark searches but also design searches should be carried out before launching a new product.

The owner of the trademark Ozmo Cornet successfully filed an opposition against the registration of two designs under the name BOBO cornet. In both cases, the GC ruled that the designs were confusingly similar to the earlier mark.46 The word elements "ozmo" and "bobo", standing out in both cases, were very similar in length, sound and at the visual level and followed the same rhythm of speech. For the part of the relevant Bulgarian public which understands the term "cornet" within the meaning of the English expression for the musical instrument "Kornett", similar to the shape of the product, the two signs were therefore also conceptually similar. The graphical differences could not eliminate those similarities. The Board of Appeal of the EUIPO has meanwhile ordered the cancellation of the designs.47

4. Right-preserving use

Trademark protection exists only for trademarks that are actually used. In case of doubt, the use of the trademark for the registered goods must be demonstrated after a grace period of five years in order to obtain the trademark rights. A purely symbolic use is not sufficient. The use must rather be economically sufficient to open up a market, in particular with regard to its geographical area, duration and extent. The mark must also be essentially used in the form that it was recorded in the register with the result that the consumer recognises the registered mark as such on the product.

Starbucks failed in its attempt to oppose the registration of the trademark FREDDOCCINO MORE THAN ICE AND COFFEE! since the company was unable to demonstrate that its own word mark FRAPPUCINO had been used in a way as to preserve its rights.48 The company had submitted a large number of newspaper articles and blog contributions, Wikipedia articles, its own web and social media appearances, advertising material as well as an affidavit from the company's marketing director containing sales figures. The Board of Appeal of the EUIPO criticised, inter alia, that Starbucks had not submitted any single evidence of sale. The affidavit did not provide any concrete sales figures either, since the information provided only allowed conclusions to be drawn on global sales and not on sales of certain products within the EU. Other documents submitted failed in part because they did not relate to the relevant period.

The case brings to mind the cancellation of McDonald's European Union trademark BIG MAC, which attracted media attention at the beginning of the year.49 McDonald's had only submitted affidavits from company representatives and samples of advertising materials and packaging to prove the sales figures. This was not enough for the EUIPO, despite the turnover of millions. The Trademark Office considered that the scope of use had not been sufficiently demonstrated. In proceedings before the EUIPO it is therefore advisable to submit, in addition to affidavits, invoices or similar objective evidence of the sales generated with the trademark.50

The proprietor of various word or word and figurative marks under the collective name Battista also failed to prove genuine use, which is why his opposition against the registration of the trademark Battistino was rejected by the GC.51 With regard to the fact that coffee was a mass product, the GC found a turnover of EUR 3,320.54 in the relevant period to be too low. Also the advertising documents submitted by the proprietor might, in general, justify the use of the earlier mark over a certain period of time. However, in the specific case they were geographically limited to a few Italian provinces which was, according to the court, an argument against genuine use.

In the dispute over the use of a figurative mark, SKW Schwarz achieved a victory for the Japanese confectionery group Lotte: The GC dismissed Nestlé's appeal against the registration of the Lotte application and annulled an EUIPO decision to the contrary.52 The judgment is one the few high court rulings examining the extent to which a trademark must be used in order for use to be considered genuine.

More than ten years of litigation between Lotte, one of Japan's largest confectionery manufacturers, and Nestlé revolved around cookie packaging depicting koala bears. In 2007, Lotte had registered a European Union trademark for pastries, biscuits, fine bakery products, etc., which consisted of a figurative mark with koalas. In 2008, then-Nestlé Schöller GmbH & Co. KG objected to said trademark, referring, to packaging bearing the inscription KOALA-BÄREN lustige Gebäckfiguren Schöller, (in English: "KOALA BEARS funny pastry figures) for which it had a figurative mark 20 years earlier that also depicts koala bears (opposing mark 1) and a figurative mark containing the word "Schöller Koalas" (opposing mark 2).

Based on Lotte's motion, EUIPO requested Nestlé to provide evidence of genuine use of the earlier mark, whereupon the company provided various pieces of evidence. The EUIPO Opposition Division initially granted the opposition. Following Lotte's appeal, however, the Fourth Board of Appeal of EUIPO found that Nestlé had failed to provide legally effective evidence of genuine use of the earlier mark. Over the years, Nestlé had changed the appearance of the packaging, resulting in ten different versions. In 2015, the GC had already ruled that the shape of the packaging used by Nestlé was in part so different from the registered trademark that Nestlé could not rely on trademark protection.53 For the opposing mark (2), the GC did not see in any of the evidence of use submitted a right-preserving use; for the opposing mark (1), the right-preserving use was only recognised with regard to packaging 2A, 5A and 5B.

As regards the opposing mark (1), the GC found that the dominant features of the mark were the hexagonal shape of the packaging, the word "koala" and the illustration of koalas in their natural environment. Under this premise, the uses shown under 2A, 5A and 5B were right-preserving for the GC. The natural habitat was depicted, although not clearly recognisable. The GC also identified modifications, such as the absence of the terms "bears" and "Schöller", as well as newly added features, which, however, did not alter the overall impression of the mark. With regard to the nature of use, the GC considered the use to be right-preserving.

The GC rejected all further evidence of use:

The product presentations shown under 7A and 7B were not recognised as right-preserving by the GC as the natural living environment of the koalas was hardly visible and newly added elements were dominating.

Also regarding the packaging shown under 10A, 11A and 11B the GC found that new elements such as the blue mice disguised as pirates were dominating.

The tubular packaging shown under 7C and 10B was already lacking the hexagonal shape, with the result that the distinctive character of the mark was significantly altered.

Subsequently, a decision was required as to whether the scope of use was sufficient in relation to the two product packaging under 2A and 5A (only for which invoices have been filed). After having been referred back to the Fifth Board of Appeal of EUIPO, the matter was remanded to the GC. In its decision, the GC found that the scope of use was insufficient to demonstrate genuine use of the Nestlé's trademark. Nestlé and its distribution partner "Kuchenmeister" had only been able to submit three invoices for the product packaging at issue for 2003 and 2005 covering some 1,400 units generating sales of 862 euros and some 5,800 units generating sales of 3,709 euros for those two years. According to the GC, these sales figures were practically insignificant for low-priced goods and could not be regarded as sufficient in the confectionery industry. As a result, the GC accepted Lotte's plea of non-rightful use and dismissed Nestlé's appeal.

On the one hand, the decision of the GC shows that a trademark should ideally be used as originally registered. This sets certain limits to the creativity of marketing. Companies should regularly set up meetings between marketing departments and brand experts to ensure that the appearance of the goods continues to be covered by trademark protection.

Second, the decision confirms that the use of trademarks is only genuine if the level of use is economically sufficient open up a market. Companies should therefore ensure that the sales figures for their goods reach an economically relevant level, or at least document the sales in detail.


1 Federal Patent Court, Decision of 04/03/2019, 25 W (pat) 502/19 – VEGIPAN.

2 Federal Patent Court, Decision of 12/04/2018, 28 W (pat) 597/17 – EKTE.

3 GC, Decision of 12/13/2018, T-830/16 – PLOMBIR.

4 Federal Patent Court, Decision of 07/10/2019, 27 W (pat) 508/18 – Power Kitchen.

5 Federal Patent Court, Decision of 11/16/2018, 26 W (pat) 2/17 – Sport Suppe.

6 Federal Patent Court, Decision of 05/23/2019, 28 W (pat) 517/18 – Backgold.

7 Federal Patent Court, Decision of 02/21/2019, 29 W (pat) 506/17 – Bremer Osterwiese.

8 GC, Judgement of 11/21/2018, T-82/17 – Exxtra Deep.

9 EUIPO Board of Appeal, Decision of 05/20/2019, R 580/2019-5 – Exxtra Deep.

10 EUIPO Board of Appeal, Decision of 01/15/2019, R 1120/2018-2 – Bäckerkruste.

11 Trademark DE30 2017 027 725 Bäckerkruste.

12 Federal Patent Court, Decision of 05/14/2019, 25 W (pat) 569/17 – Paletas.

13 Federal Patent Court, Decision of 05/14/2019, 25 W (pat) 76/17 – Paletas Berlin.

14 EUIPO Board of Appeal, Decision of 11/16/2018, R 416/2018-2 – For you.

15 EUIPO Board of Appeal, Decision of 09/04/2019, R 673/2019-4 – Hoch Genuss.

16 EUIPO, Decision of 07/23/2019, R 911/2016-1 – DANISH BY DANISH CROWN.

17 EUIPO, Decision of 04/01/2019, R 1932/2018-1 – GOLDEN Organic.


19 EUIPO Board of Appeal, Decision of 10/22/2018, R 604/2018-4 – Authentic Bakery Style / MADE EASY.

20 Federal Patent Court, Decision of 10/11/2018, 25 W (pat) 64/17 – Figure of orange rectangle.

21 Federal Patent Court, Decision of 10/11/2018, 25 W (pat) 65/17 – Figure of orange rectangle with three dots.

22 EUIPO, Decision of 03/04/2019, R 1709/2018-2 – Figure of lime.

23 EUIPO Board of Appeal, Decision of 01/08/2019, R 1682/2018-2 – Figure of Green cup.

24 Federal Patent Court, Decision of 12/13/2018, 25 W (pat) 78/14 – Chocolate packaging Ritter Sport II.

25 Federal Patent Court, Decision of 11/04/2016, 25 W (pat) 78/14 – Chocolate packaging Ritter Sport I.

26 GC, Judgement of 10/03/2018, T-313/17 – Form of a container.

27 GC, Judgement of 12/15/2016, T-112/13 – Kit cat 4 fingers.

28 ECJ, Judgement of 07/25/2018, C-84/17 P, C-85/17 P, C-95/17 P – 4 Finger KitKat.

29 Federal Patent Court, of 02/14/2019, 25 W (pat) 90/17 – NATUREX.

30 Federal Patent Court, of 05/14/2019, 27 W (pat) 522/17 – Hello Cupcake.

31 Federal Patent Court, of 03/13/2019, 28 W (pat) 553/17 – Honeysun.

32 Federal Patent Court, Decision of 11/15/2018, 25 W (pat) 598/17 – pure chocolate.

33 Federal Patent Court, Decision of 03/22/2019, 27 W (pat) 116/16 – barösta coffee bar.

34 EUIPO Board of Appeal, Decision of 10/10/2018, R 278/2018-1 – TIRABACI.

35 EUIPO Board of Appeal, Decision of 02/06/2019, R 1663/2018-2 – FROSTINO.

36 EUIPO Board of Appeal, Decision of 07/08/2019, R 2496/2018-5 – Krasnyj.

37 EUIPO Board of Appeal, Decision of 05/16/2019, R 1722/2018-1 – Potato Joe.

38 EUIPO Board of Appeal, Decision of 04/26/2019, R 1813/2018 – FR!ZZI.

39 EUIPO Board of Appeal, Decision of 10/23/2018, R 2169/2017-5 – DELCATO.

40 EUIPO Board of Appeal, Decision of 06/20/2019, R 359/2019-5 – Eggcellence.

41 GC, Judgement of 11/29/2018, T-763/17 – Welly.

42 GC, Judgement of 12/11/2014, T-480/12 – Master.

43 GC, Judgment of 12/07/2017, T-61/16 – Master.

44 ECJ, Judgement of 12/20/2017, C-393/16 – Champagner Sorbet.

45 Federal Court of Justice, Judgement of 07/19/2018, I ZR 268/14 – Champagner Sorbet II.

46 GC, Judgment of 02/07/2018, T-794/16, T-793/16 – Cornet.

47 EUIPO Board of Appeal, Decision of 10/20/2018, R 1334/2018-3, R 1332/2018-3 – BOBO cornet.

48 EUIPO Board of Appeal, Decision of 05/13/ 2019, R 1382/2018-4 – FREDDOCCINO MORE THAN ICE AND COFFEE!

49 EUIPO, Decision of 01/11/2019, 14 788 C.

50 See also the review at

51 GC, Judgement of 06/06/2019, T 221/18 – BATTISTA.

52 GC, Judgement of 07/12/2018, T-41/17.

53 GC, Judgement of 09/15/2015, T-483/12.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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