The trademark dispute between registration of the mark THE ONLY ONE versus Nestlé’s earlier word mark ONE is taking a new course. The renewed EUIPO examination required after the ECJ’s 2020 ruling was flawed, the CFI has now ruled.
The trademark dispute has been continuously occupying the European instances and courts since 2016. The case concerns the lucrative and growing market for dog food and nutritional supplements.
THE ONLY ONE vs. ONE: dog food marks
In April 2016, the intervener, Amigüitos pets & life, SA (Spain) had applied for the word and figurative mark “THE ONLY ONE by alphaspirit wild and perfect” as a figurative mark – essentially for pet food and dietary or nutritional supplements for animals, in particular for dogs. The trade mark application was accepted and registered by EUIPO.
However, only a few weeks later, the applicant Nestlé (Société des produits Nestlé SA, Switzerland) filed an opposition against this trade mark registration. The applicant claimed that there was a likelihood of confusion with and even unfair exploitation of its own earlier, very well-known trade mark ONE, which has been protected by Nestlé in the EU as a word mark since 2013 – among others also for “feed for animals” of Nice Class 31.
Legal dispute through many instances
The Opposition Division upheld Nestlé and confirmed that the mark applied for was liable to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the mark ONE (Article 8(5) of Regulation (EU) 2017/1001). This decision was also upheld by the Board of Appeal, which was subsequently called upon.
Then, in December 2019, this dispute was heard for the first time before the European Court (Court of First Instance, CFI), where the intervener Amigüitos pets & life won – we reported (T-40/19, EU:T:2019:890, annulling judgment).
In it, the CFI essentially held that the very low degree of similarity between the signs at issue did not allow the conclusion that there was a likelihood of confusion between them, despite the similarity, if not identity, of the goods.
Nestlé then appealed to the highest European court, the ECJ. Although the ECJ rejected Nestlé’s claim by decision of 4 June 2020 (C-97/20 P, not published, EU:C:2020:442), it referred the case back to the EUIPO Board of Appeal for a new decision under case number R 424/2020-5. The Board in turn ruled only a few weeks later: by decision of 29 July 2020 (‘the contested decision’), it allowed the intervener’s appeal and rejected Nestlé’s opposition to trade mark registration in its entirety.
In particular, it held that Nestlé had not provided evidence of the claimed highly distinctive character of the earlier mark and of the reputation of the ONE mark – but that the earlier ONE mark had such highly distinctive character only for the PURINA ONE mark. Therefore, there was no likelihood of confusion between the marks in question.
Nestlé suit: Renewed EUIPO examination basically did not take place
This led to a new hearing of this case before the European Court of First Instance (CFI, EU:T:2021:794), which has now been decided. Nestlé claimed that the EUIPO re-examination was defective or lacking.
The applicant pointed out that the CFI had expressly recognised in the annulment judgment that the question whether the reputation of the earlier mark could be established on the basis of a mark represented in a different form had not been raised or examined in the annulled decision of the Board of Appeal. Therefore, the Board of Appeal did not fulfil its duty to comply with the annulling judgment (infringement of Article 72(6) of Regulation No 2017/1001).
However, in order to comply with and fully implement a judgment annulling an act, the EUIPO must adopt a new decision which takes into account not only the operative part of the judgment, but also the reasons which led to that judgment and form its essential basis.
The question before the CFI was thus: Was the EUIPO obliged to examine whether the enhanced distinctiveness and reputation of the earlier mark could be proved on the basis of another mark of the applicant presented in a different form?
CFI: other form of the ONE mark should have been examined
The CFI affirmed this. The Board of Appeal was under an obligation to implement the annulling judgment, the CFI held, by re-examining the applicant’s arguments concerning the highly distinctive character and reputation of the earlier mark, to consider whether that reputation could be established on the basis of a mark registered in a different form and, in particular, whether the elements distinguishing those two marks of the applicant enabled the relevant public to perceive the goods in question as coming from the same origin.
However, since the Board of Appeal only pointed out that the General Court had itself examined the question of whether the earlier mark had enhanced distinctiveness, it had in no way fulfilled the duty to carry out its own re-examination, the CFI stated. However, the CFI had left open in the annulling judgment the possibility of establishing the enhanced distinctiveness and reputation of the earlier mark in another form in accordance with the applicant’s submissions in the proceedings before the EUIPO, because this had not been raised or examined by the Board of Appeal in relation to the earlier mark so far.
The CFI also referred in this context to the case-law of the ECJ according to which, where a decision of the EUIPO is annulled by the European Court, the grounds on which the court rejected certain arguments relied on by the parties cannot be regarded as res judicata (ECJ, July 2018, Nestlé v Mondelez, C-84/17 P, C-85/17 P and C-95/17 P, EU:C:2018:596, para 53).
The CFI therefore has now upheld Nestlé’s action against the contested decision of the Board of Appeal and annulled that decision. According to the CFI judgement, the Board of Appeal of infringed Article 72(6) of Regulation No 2017/1001.
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