Aldi fails to prevent registration of ALIFOODS

In Aldi Einkauf GmbH & Co OHG v Office for Harmonisation in the Internal Market (OHIM) (Case T-240/13, November 26 2014), the General Court has confirmed a decision of the Fourth Board of Appeal of OHIM rejecting an opposition filed by German company Aldi Einkauf GmbH & Co OHG against a Community trademark (CTM) application for ALIFOODS in the name of Spanish company Alifoods SA.

In October 2010 Alifoods filed an application for the registration of the figurative mark ALIFOODS, depicted below, as a CTM for goods and services in Classes 29, 32 and 35 of the Nice Classification:

In April 2011 Aldi lodged an opposition against this application based on earlier ALDI word marks: one international registration designating the European Union and two CTMs covering, among others, Classes 29, 32 and 35.

The Opposition Division of OHIM rejected the opposition and the Fourth Board of Appeal of OHIM confirmed, finding, among other things, that Aldi had failed to prove the higher degree of distinctiveness of its mark. Aldi filed an appeal with the General Court, which upheld the board's decision.

The main grounds of the General Court's decision were as follows:

• The General Court is not allowed to take into consideration any new documents submitted during the court proceedings. It is allowed only to re-examine the contested decision and to take into consideration the documents submitted during the administrative proceedings before OHIM. Therefore, the court could not take into consideration the additional documents presented by Aldi to the court with its statement of claim in order to prove the alleged higher degree of distinctiveness of its mark.
• The General Court confirmed that OHIM had been correct in disregarding Aldi's international registration, as Aldi had not submitted any extracts from the official database of WIPO (see Rule 19(2)(a)(ii) of the Community Trademark Implementation Regulation (2868/95), which is the office responsible for international registrations, but only extracts from the official database of OHIM. This would have been sufficient for an original CTM, but not in the case of an international registration designating the European Union.
• The General Court concluded that OHIM had not misapplied the concept of likelihood of confusion; the only exception was that the court did not find any similarity between the relevant trademarks, while OHIM had found that there was a very low degree of similarity. The General Court was of the opinion that the element 'food' in the contested trademark could not be separated from the element 'ali', which was placed at the beginning. The term 'Alifood' was written in one word and the two elements 'ali' and 'food' were kept together by the graphic element representing an arc. Considering the trademarks as a whole, there was no similarity, taking into consideration in particular the graphic elements of the contested trademark, which were found to be more that mere decorations.

The finding that Aldi had failed to prove that its ALDI mark has a higher degree of distinctiveness will most likely come as a surprise for German consumers, who are very familiar with the Aldi brand. However, the case clearly shows that it is not sufficient for brand owners to 'rest on their laurels' - it is necessary to thoroughly prove the alleged higher degree of distinctiveness of a mark and submit the relevant proof within the deadlines.

Once again, this decision shows that the administrative proceedings before OHIM are very formal and strict proceedings. It is necessary to meet the deadlines and to duly submit all arguments and documents; evidence submitted before the court for the first time will not be taken into consideration. The court proceedings are re-examination proceedings only.

Further, this decision clearly shows that the European authorities tend to focus more and more on the figurative elements of word-and-device trademarks, and do not automatically regard the word elements as the dominant ones.

Tanja Hogh Holub, Beiten Burkhardt Rechtsanwaltsgesellschaft mbH, Munich