The EUIPO Boards of Appeal go ‘exxtra deep’ in crisp manufacturer case

European Union
  • The General Court has annulled a decision from the EUIPO Fourth Board of Appeal to dismiss an appeal over the mark EXXTRA DEEP
  • It held that the board erred in failing to conclude that the contested mark had descriptive character for vegetable and potato products for snacks in Class 29
  • As part of its judgment the court carried out a detailed analysis of snack products in Classes 29

The General Court has annulled a decision from the EUIPO Fourth Board of Appeal to dismiss an appeal over the mark EXXTRA DEEP. The court’s decision includes a detailed analysis of products in Classes 29.

Facts

On 23 September 2013 Intersnack filed an application to register the word sign Exxtra Deep in Classes 29, 30 and 31. It was registered as an EU trademark on 3 February 2014. On 24 November 2014 PepsiCo Inc filed an application for a declaration of invalidity on the basis of Article 52(1)(a) under Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001).

The Cancellation Division partially granted the application for a declaration of invalidity in Classes 29 and 30. It indicated, in particular, that the word ‘deep’ is used in relation to crisps to describe their ridges, which is a shape applied by a variety of crisp manufacturers to their products. It therefore found that the expression ‘exxtra deep’ would be understood by the relevant public as a description of the ridge-cut shape of the crisps. However, it took the view that this finding was true only for crisps and for goods similar to crisps, which could be sold in a ridge-cut shape. By contrast, for the other goods, it took the view that the contested mark was not descriptive and maintained the registration for preserved, dried and cooked fruits and vegetables in Class 29.

PepsiCo brought an appeal before the EUIPO and requested that the decision be annulled as the division had not declared the contested mark invalid in respect of preserved, dried and cooked fruits and vegetables in Class 29. The Fourth Board of Appeal dismissed the applicant’s appeal. It found that the contested mark was neither descriptive nor devoid of distinctive character for preserved, dried and cooked fruits and vegetables in Class 29. The first part of the discussion concerned the admissibility of all or part of the new annexes A7 to A17, which were attached to the application produced for the first time before the court.

The EUIPO considered that Annex A7 a non-issue as it concerned its decision-making practice. Further, the admissibility of various extracts from Wikipedia (Annexes A10, A13 and A16), from a cooking blog (Annex A15), from an online discussion forum (Annex A14) and from a website dedicated to food (Annex A17) was disputed, as well as the admissibility of three extracts from the online dictionary ‘dictionary.com’ (Annexes A9 and A12) and the Cambridge English Dictionary (Annex A11). Annex A8, consisting of an extract from the EUIPO’s website to illustrate its practice when applying Article 28(8) of Regulation No 207/2009 (now Article 33(8) of Regulation 2017/1001) was also disputed.

However, Annex A8 was accepted. This annex documented the EUIPO’s implementation of Article 28(8) of Regulation 207/2009 by way of a second non-exhaustive list of terms that were not clearly covered by the literal meaning of the class headings.

The other annexes produced for the first time before the court were found inadmissible even though it was argued that they merely complemented the evidence already submitted to the EUIPO and illustrated well-known facts.

The dispute was therefore limited to preserved, dried and cooked fruits and vegetables in Class 29 on the basis of Article 7(1)(b) and (c) of Regulation 207/2009. The second plea alleged infringement of Articles 28(2), (4) and (5) of Regulation 207/2009 (now Articles 33(2), (4) and (5) of Regulation 2017/1001).

According to case law, Article 7(1)(c) of Regulation 207/2009 focuses on public interest, (eg, descriptive indications or signs relating to the characteristics of goods or services in respect of which registration is sought to be able to be freely used by all).

Further, signs or indications that may serve in trade to designate the characteristics of the goods or services are, by virtue of Article 7(1)(c), regarded as incapable of performing the essential function of a trademark. This function was defined as the identification of the commercial origin of the goods or services, which enables the consumer to repeat the experience if positive, or to make another choice if negative.

Therefore, for a sign to be rejected, there must be a link between the sign and the goods or services in question that is sufficiently direct and specific to enable the public to immediately perceive a description or a characteristic of the goods and services in question. Moreover, a mark must have descriptive character. This applies not only to the goods which it describes, but also to the more general category to which those goods belong in the absence of a suitable restriction of the trademark by the applicant.

PespiCo did not dispute the assessment concerning the relevant public, which consisted of the English-speaking general public of the European Union. Nor did Intersnack dispute the meaning of the expression ‘exxtra deep’ as ‘exceptionally deep’. The Fourth Board of Appeal was criticised for having acknowledged the descriptive character of the contested mark for ‘extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks’ in Class 29 while excluding it for preserved, dried and cooked fruits and vegetables in the same class, although the former goods are covered by the general category comprising the latter goods.

The main question was whether extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks are covered by the category ‘preserved, dried and cooked fruits and vegetables’.

Decision

The General Court said that, in the description of the goods in Class 29, there is in principle no reason to consider that extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks are covered by the category ‘preserved, dried and cooked fruits and vegetables’. First because those two categories of goods are separated by a semi-colon, which establishes a distinction between two different categories of goods falling within the same class, whereas a comma separates items within the same category of goods. Secondly, a word or expression such as ‘including’ or ‘in particular’ did not justify one of the categories as being included in the other.

The category ‘preserved, dried and cooked fruits and vegetables’ corresponded to one of the general indications of the heading of Class 29 of the Nice Classification (meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats) but this alone did not support the conclusion that extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks were covered by the category ‘preserved, dried and cooked fruits and vegetables’.

Communication 2/12 of the executive director of the EUIPO of 20 June 2012 concerning the use of class headings in lists of goods and services in respect of Community trademark applications and registrations – while repealing Communication 4/03 – defined a literal approach, in Point VIII, which consists of giving the terms of a general indication their natural and usual meaning. The second paragraph of Part II (i) of Communication 1/13 of 26 November 2013 confirmed that this approach applied when the application for registration covered only some of the general indications of a class heading. Finally, the legislature confirmed that the literal approach by the amendment made to Article 28(5) of Regulation 207/2009 by Regulation (EU) 2015/2424 provides that “the use of ... general indications of the class headings of the Nice Classification ... shall be interpreted as including all the goods ... clearly covered by the literal meaning of the indication”.

The General Court, in a highly detailed study, agreed that snack products (in particular crisps) are made from potatoes, (ie, vegetables). Crisps can be made from any fruit or vegetable. Fruit and vegetables in Class 29 are preserved, dried and cooked (fresh fruit comes under Class 31). Thus extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks in Class 29 are covered by the category of preserved, dried and cooked fruit and vegetables in the same class. This was confirmed by references to previous decisions of the EUIPO.

Comment

It was held that the Fourth Board of Appeal erred in failing to conclude that the contested mark had descriptive character for extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks in Class 29 in the assessment for preserved, dried or cooked fruits and vegetables in the same class.

Consequently, the contested decision was annulled in so far as it dismissed the applicant’s appeal to the opposition division inasmuch as it had not annulled the contested mark in respect of preserved, dried and cooked fruits and vegetables in Class 29.

Get unlimited access to all WTR content