General Court rejects Aldo trademark appeal in win for Aldi

The General Court today rejected an appeal by Bulgaria-based Aldo Supermarket, clearing the way for German supermarket chain Aldi to register its name as a trademark.

In 2014, Aldi applied for the word mark ‘Aldi’ in a number of classes (3, 4, 7, 9, 16, 24, 28, 31, 34, 35, 36, 38, 39, 41, 42, and 43).

Relevant to the proceedings is class 35, covering advertising, retailing including via the internet, and business administration in relation to many goods ranging from food to tobacco, to toiletries and household items.

Aldo filed an opposition to the mark’s registration. The supermarket chain relied on its earlier-registered Bulgarian figurative mark (47,361), filed in 2002, which features the word ‘Aldo’ within a blue and orange square.

Aldo’s opposition centred on Aldi’s applied-for registration in class 35, as its own mark is similarly registered in that class for business management, advertising purposes, and the supply of goods.

Aldo said that the mark is used “intensively” in Bulgaria.

In 2016, the European Union Intellectual Property Office’s (EUIPO) Opposition Division upheld the opposition in part in relation to the advertising and business services.

However, the Opposition Division rejected Aldo’s opposition in relation to the retail services.

Aldi filed a notice of appeal, and the following year, the Fourth of Board Appeal annulled the decision and rejected Aldo’s opposition in its entirety.

The board noted a number of procedural issues with Aldo’s opposition.

For example, Aldo’s submissions of the representations of the mark contained no reference to the source that the mark emanated from, and the supermarket chain did not submit an official document proving the mark’s registration.

Aldo also failed to provide evidence of the mark’s use, the board added.

At the General Court, Aldo claimed that a black and white PDF copy of the trademark’s registration certificate is “perfectly reliable”.

Today, the General Court disagreed, and sided with the board’s findings.

The court noted that three different representations of Aldo’s mark had been filed at the EUIPO, but Aldo should have produced an official document demonstrating that the trademark is registered.

It added that the mark relied on is a colour mark, and the PDF document showed a black and white copy, which should have been “identical in every respect to that certificate, including, of course, as regards the colours claimed by the earlier mark”.

In 2014, the EUIPO had written to Aldo to “expressly” explain this requirement, the court said.

The General Court explained that Aldo’s submission of three different representations of the mark (one in black and white, and two in different colour combinations) “certainly do not satisfy the condition of accuracy and reliability” required in opposition proceedings.

Flexibility on this point is not permitted, the court said, and the requirements of opposition procedures are set out “precisely and clearly”—so the Opposition Division was not required to point out Aldo’s “deficiency” in failing to produce evidence to support its opposition.

The General Court dismissed Aldo’s appeal and ordered the Bulgarian chain to pay the costs of the EUIPO and Aldi.