O2 case crumbles as General Court rules on 3D biscuit marks

The EU General Court has sided with Spanish biscuit company Galletas Gullón in a dispute with the European Union Intellectual Property Office (EUIPO) and telecoms company O2 over 3D trademarks.

Yesterday, October 23, the General Court handed down two rulings, annulling decisions by an EUIPO appeals board which found that two contested 3D marks, owned by Galletas Gullón, had not been put to genuine use.

The marks, registered in 2004 and 2009, cover bags for biscuits and the packaging includes the term ‘mini O2’.

In 2014, O2 filed tried to revoke the marks, claiming they had not been put to genuine use for a continuous period of five years, between June 2009 and June 2014.

The EUIPO’s Cancellation Division rejected the attempts at revocation in June 2015, and O2 subsequently appealed.

In May 2016, the Fourth Board of Appeal upheld the appeal, annulling the previous decisions and revoking Galletas Gullón’s rights in the contested marks as of July 2014.

According to the General Court, the board had found that in both cases, the “mark as used altered the distinctive character of the mark as registered”, and that the changes concerned dominant elements of the contested mark (including colours of the packaging and the graphic representation of the house mark).

The board had also found that that the criterion relating to the extent of use had not been satisfied in the present case, as the marks didn’t appear on the invoices submitted and couldn’t be linked to the goods mentioned on the invoices.

“Secondly, it found that, having regard to the nature of the goods in question, the sales were not significant, with respect to both the number of units and the turnover. Thirdly, it found that the applicant had not been able to prove constant use with regard to the relevant period,” said the General Court.

The board had also found that Galletas Gullón had not established that there had been genuine use aimed at end consumers.

Galletas Gullón appealed, arguing that the board wrongly concluded that the documents the biscuit maker had submitted didn’t prove genuine use, and that the differences between the marks used and the marks registered didn’t alter the distinctive character of each mark.

“It is apparent that the only elements which differentiate the registered mark from the mark used are, first, the white colour in the upper part of the packaging and, secondly, the stylisation of the element ‘gullón’ and of the letter ‘O’ and the number ‘2’ in the element ‘mini O2’,” said the court in a statement about one of the marks.

The General Court added that these changes were not capable of altering the distinctive character of the registered mark.

On genuine use, the court said that “although the commercial volume of the use of the contested mark is limited, the invoices submitted nevertheless make it possible to conclude, in view of the fact that they were issued very regularly, that the goods at issue were, in the course of the relevant period, marketed for a sufficient length of time to establish that that use was genuine”.

The EUIPO’s decision was annulled, and the General Court ordered the EUIPO and O2 to pay the costs of the case.

The rulings are available here and here.