CHURROS for Spanish waffles is generic, says court

In Møller v Dansk Supermarked A/S (Case V-122-07, February 27 2009), the Danish Maritime and Commercial Court has considered whether the owner of a figurative trademark including the words 'churros spanske vafler' (Danish for 'churros Spanish waffles') could prevent supermarket NETTO from selling goods under the name 'churros'. 
Anita Møller sells food at festivals, markets and private parties. In 2003, she took a lease of a shop called 'Warm Spanish Churros' in Copenhagen. On June 3 2005 Møller registered a device mark consisting of the words 'churros spanske vafler' written on a falling star for fast food in Class 29 of the Nice Classification and bread and confectionery in Class 30. Since 2005, Møller has been selling goods all over the country.
In 2007 Møller applied for the registration of the mark CHURROS. The Danish Patent and Trademark Office dismissed the application on the grounds that the mark lacked distinctive character.

Meanwhile, Møller opposed an application for the registration of the mark SEÑOR CHURROS before the Office for Harmonization in the Internal Market (OHIM). OHIM upheld the opposition and refused to register the mark in Classes 11, 29, 30 and 43, stating that:
"[c]onceptually, the word 'churros' does not have any meaning in Danish, nor is it likely that its meaning in Spanish will be understood by the Danish public. The expression 'spanske vafler' (Spanish waffles) is generic and will naturally be perceived as such by the Danish public."
Having been informed of the decision, the Danish Trademark Office registered the mark CHURROS for goods and services in Classes 11, 12, 16 and 39. A preliminary registration was also issued for goods and services in Classes 29, 30 and 35. An opposition has been filed against this registration.
In 2007 NETTO, the daughter company of Dansk Supermarked A/S, marketed goods with the text "churros, traditional Spanish snacks, are served warm with cinnamon and/or sugar”. Møller filed a writ in court to protect her trademarks.
Møller argued that her trademarks were well known in that they had been used nationwide since 2005. Møller also argued that the word 'churros' was not generic. Further, she claimed that use of the word 'churros' by NETTO created a likelihood of confusion, as consumers might believe that NETTO's goods originated from Møller's company. Finally, Møller alleged that NETTO's action posed a serious threat to her business and that a strong message should be sent to large companies.
In response, NETTO argued that Møller's marks were not well known in Denmark and, therefore, did not benefit from broader protection. NETTO also alleged that the word 'churros' was generic for Spanish waffles. As the words 'churros' and 'Spanish waffles' were descriptive of Møller's goods, NETTO argued that the protection of Møller's trademark extended only to the figurative element of the mark. Therefore, there was no likelihood of confusion between Møller's and NETTO's goods. 
The Danish Maritime and Commercial Court ruled that 'churros' is a generic term for goods which might be produced, imported and sold by any party. Therefore, the word 'churros' should be kept free for use by competitors, even though it is not a Danish word. Consequently, the court held that Møller could not have a monopoly over the word 'churros' for such goods and ruled in favour of NETTO.
Christian Levin Nielsen, Zacco, Copenhagen

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