Watch out for descriptive marks – a lesson not only for the food industry
Entrepreneurs in the food industry often use product names from other languages. Words taken from countries associated with good cuisine have undoubtedly a great power to attract consumers. They evoke associations with products of high quality and unique taste. In the case of an EU trademark, such marks may be understood differently by consumers in different Member States. How, then, should it be assessed whether such marks are descriptive?
Judgment of the General Court (Third Chamber) of 14 July 2021, Case T-527/20
The German company Aldi GmbH & Co. KG, which operates a discount supermarket chain, applied for registration of the following designation as an EU trade mark:
The word element of the mark is the word ‘cucina’, which means kitchen in Italian. The mark was applied for in respect of goods in Classes 29 and 30 of the Nice Classification – a broad list of food products such as meat, fish, various types of dairy products or coffee and tea, among others.
EUIPO refused to register the mark, claiming that it lacked distinctive character on account of its descriptive nature. The word ‘kitchen’ is not suitable for distinguishing food products in the market, and the graphical elements of the mark are not very original and also indicate the type of goods it designates. Following an appeal by the applicant, the case was finally brought before the General Court, which found no fault with the decision and agreed with the position taken earlier by EUIPO.
The goods to be designated by the mark applied for are mass-consumption goods. Therefore, a wide public with an average level of attentiveness should be taken into account. Pursuant to Article 7(2) of the European Union Trade Mark Regulation 2017/1001, marks for which obstacles to registration exist only in part of the Union shall not be registered. The perception of the Italian-speaking public of the mark must therefore be taken into account.
The word ‘kitchen’ can mean a room in which meals are prepared as well as a set of dishes and culinary customs characteristic of a particular country or region (for example, ‘Italian cuisine’). The word thus has a descriptive function in relation to food products and is not suitable for the role of indicating their origin from a particular company. The Court did not share the applicant’s view that some of the goods covered by the application, such as chips, ice cream or chocolates, were not at all linked to the kitchen because they did not require preparation for consumption and were customarily consumed in the living room.
The descriptive character of the word element is also strengthened by the graphical element of the mark representing a cooking vessel with a lid. The trade mark applicant tried to defend itself by arguing that an average consumer does not analyse precisely what the shape of its trade mark represents and that it may also be perceived as the shape of a hat, a crown, a piece of a jigsaw puzzle or a weight used in an old balance scale. However, this position did not convince the Court.
It is therefore worth remembering two things. First, in the case of an EU trademark, marks that are descriptive to consumers in parts of the EU will also be denied registration. The situation will be different if a national mark is registered with the Polish Patent Office, although even here some signs consisting of foreign words commonly known by Polish consumers, especially in English, may be considered descriptive. Secondly, if the word element of a word and figurative mark can be considered descriptive, it is worth ensuring that the figurative element is clearly distinguishable from typical signs indicating the type of goods or services.
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