Since May 2020 Nestlé was forced to rename its ‘Incredible Burger’ in Holland, the court in The Hague saw a likelihood of confusion with ‘Impossible Burger’. Nestlé then filed an application for invalidity against ‘Impossible Burger’ – but now in May the EUIPO rejected this with interesting considerations on suggestive trademark features.
In competetion for vegan burgers and good brand names for the burgers, Nestlé is engaged in a prolonged trademark dispute with competitor Impossible Foods Inc. (USA), which was perceived as a serious competitor in the competitive growing veggie burger market by Nestlé and Beyond Meat at the latest when Google wanted to buy it.
Trademark dispute over veggie burgers: Impossible versus Incredible
Impossible Foods Inc. burgers are known by the brand name of the same name, namely Impossible Burger. Nestlé became particularly aware of this when the Swiss company was forced to rename its own “Incredible Burger” in the Netherlands last year. Because the court in The Hague saw a risk of confusion for burgers between Incredible and Impossible.
Nestlé had to follow suit and renamed the Incredible Burger ‘Sensational Burger’ – but at the same time filed an application for a declaration of invalidity with the European Trademark Office (EUIPO) for the EU trademark Impossible Burger. Nestlé argued that the word ‘impossible’ in the mark was part of a motivational expression. Impossible Foods’ Impossible Burger mark was a descriptive indication and also a purely advertising message and should therefore be declared invalid.
Invalidity application against Impossible Burger
The EUIPO ruled on this application in May 2021 (Cancellation No C 33 961 (Invalidity)) – against Nestlé. Impossible Foods was on thin ice, the EUIPO explained, by mixing its trademarks with advertising claims such as “plants that make the impossible possible”. But still, consumers would not perceive the Impossible Burger brand as a burger that was thought to be impossible to make.
Rather, consumers would see Impossible Fooods’ texts and videos as somewhat amusing word games – the interpretation of which would also require several mental steps. Precisely then, however, an advertising statement or a slogan can also be a protected trade mark. In any case, according to the EUIPO, the mark does not describe any particular characteristics of a vegetarian burger from Impossible Foods, nor does it describe a superior quality. In common parlance, impossible (= “impossible”) has no positive connotation.
In addition, the EUIPO referred to the Cine Action decision, according to which Article 7(1)(c) of the Community Trade Mark Regulation (CTMR), with regard to the absolute grounds for refusal, does not apply to terms which are only allusive or suggestive of certain characteristics of the goods, i.e. suggestive trade mark features.
Nestlé’s application for a declaration of invalidity was therefore dismissed in its entirety. However, Nestlé may pursue this case further and bring an action before the European Court. This is also likely to happen, as the very lucrative veggie burger market is at stake – and because trademarks that are also advertising messages are always decided on a case-by-case basis.
Would you also like to protect or defend a trade mark?
Our lawyers have many years of expertise in trade mark law as well as in the entire field of intellectual property and are entitled to represent you before any court – in Germany and also internationally.