What does the General Court have to do with your morning cup of tea or coffee?
4 May 2021
What might two recent General Court rulings mean for the future branding of your morning cup of tea or coffee?
Many of us have an affectation for coffee that, some might argue, borders on unhealthy and this has been the case since its initial introduction to both Malta and Vienna in the early 16th century. Whether it is a relaxed afternoon of Café and people watching in Montmartre, a quick espresso before you march through Piazza Madonna dei Monti or holding your Americano tightly to your chest as your bus swerves across Oxford Street, coffee has become an integral part of the European, and Global, daily routine.
As demand has grown, so has choice, with options available now for different roasts, flavours, colours, acidity, and even extra energy, just in case the average 100mg of caffeine per cup was not quite enough to get you through the next hour or two until you can have another one. With so much variety and choice available to the average consumer, it becomes more difficult to stand out from the crowd, and therein lies the need for brand protection. Ensuring that your brand is registered, trademarked and secured is integral for success as well as in helping to protect against those who might try to copy your brand’s legitimacy and renown. So what happens when your established brand name spreads to a new international market, perhaps somewhere where your brand name carries unintended connotations or even means something completely different to the local population?
This scenario was recently experienced by Hell Energy, a Hungarian soft drinks manufacturer, who tried to register a European Union Trademark (EUTM) for their high energy coffee mix. This was refused by the EUIPO on the grounds that the term ‘Hell’ could be misconstrued in German speaking countries for the word ‘helle’ meaning ‘light’, as in ‘helle Röstung’ or ‘lightly roasted’. Syntax and translations aside, this issue presents a common problem as global trade opens up previously inaccessible markets, and the potential for mistranslation or misunderstood nuance is high. Simply put, local knowledge is key, partly to understanding the local customs or language but primarily to ensure your brand does not fall foul of local legislation. With our extensive knowledge of European regulatory compliance, as well as informal best practice, Zacco can help you to explore and expand into new markets by reviewing current brands that might present competition and ensuring that your patents, trademarks and designs continue to remain protected.
The EUIPO’s decision, upheld by the Board of Appeal, was to refuse Hell Energy’s application, on the basis that Hell would reasonably be presumed to be associated with roasting for the German speaking populations of Germany, Austria, Luxembourg and Belgium. The General Court, however, has recently announced a different stance with their argument that the relevant public would not consider ‘light’ to be a relevant descriptive of coffee, instead it is often perceived as ‘rather dark’. This combined with the idea that ‘roasted’ does not form part of the application, would suggest that a mental leap is required before a consumer might associate ‘Hell’ with ‘helle Röstung’. Thus, the word is not characteristic of coffee or ‘descriptive’ as per Art. 7(1)(c) EUTMR, nor can it directly be linked to coffee in the eyes of most consumers, and therefore ‘distinctive’ as per Art. 7(1)(b) EUTMR,. Thus, the initial decision was annulled. The decision is still open to appeal, and you can still easily find coffee available that perhaps contains more caffeine than is completely necessary, but you hopefully have a better understanding of the need to identify, explore and educate yourself on the potential EUIPO pitfalls prior to entering new markets and territories.
And it’s not just coffee, tea gets caught out too.
The EUIPO and Board of Appeal also partly refused an EUTM application seeking to register the words ‘Windsor Castle’ for branding use on teas, on the grounds that they were non-distinctive and would surely be considered to be part of the aforementioned castle’s promotional goods for sale. Similarly, it could perhaps be construed that the popularity of historical sites, such as that at Windsor, could be seen to be supporting a particular brand if they are associated by name, even if they have no existing relationship with said brand. Such intangible values may present an organisation with an undeserved competitive advantage.
The argument put forward by the applicant was that there was no connection between the goods involved, this was backed up by the General Court who have decided to reverse the previous decision. This was primarily based on the understanding that the castle itself was not known in relation to tea and there was no indication that the brand was promoted by, supported or in any way related to the Castle at Windsor. So, for now, a decision has been made but it will be interesting to see if other companies follow suit. Either way, it remains important to discuss the potential pitfalls or problems that your brand might face, from associations or otherwise, when trying to register and protect your IP rights.
If you have time for a cup of coffee (or tea), we would welcome the opportunity to speak with you to explore potential opportunities for expanding and protecting your brand. Our expert Trademark attorneys can help you to navigate the comprehensive registration process when entering European markets, as well as advising on market conditions and potentially competitive IP Rights. Similarly, our Digital Brands team is on hand to advise on the best practice approach to online enforcement and opportunities to expand your brand’s public profile.
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