Nestlé obtains cancellation of 'coffee break' mark

Sweden

Nestlé has successfully obtained the revocation of the Swedish trademark FIKASTUND (Opposition No 2013/0129/0001, September 15 2015).

The mark FIKASTUND is composed of the words 'fika' and 'stund', which, taken together, roughly mean a 'coffee break'. Sweden is one of the world's leading coffee-consuming countries. Consequently, fika has evolved to become not only a word describing the event where coffee and various sweets (as well as other beverages and snacks) are consumed, but also a social institution and a central part of Swedish culture. Fika is thus part of most Swedes’ daily life, in workplaces or when socialising with friends and family. The broad significance of fika is often confirmed by those who encounter Swedish culture for the first time: in Sweden coffee is an experience, and fika is at the heart of socialising.

Nevertheless, the Swedish word mark FIKASTUND was registered by a Swedish woman in June 2013. The Swedish Patent and Registration Office did not find the mark to be descriptive and thus allowed its registration. Nestlé, however, opposed the registration. As grounds for the opposition, Nestlé claimed that the trademark lacked distinctive character since the goods covered by the registration were closely connected to the meaning of the trademark. In response, the trademark holder argued, among other things, that the connection between the trademark and the goods was not substantial.

The Swedish Trademark Act (2010:1877) must be applied in accordance with the Trademarks Directive (2008/95). According to the directive, a trademark lacks distinctiveness when it is descriptive - namely, when the trademark is used only to describe the characteristics of the goods. The issue has been considered by the Court of Justice of the European Union in BIOMILD (Case C-265/00, Paragraph 19) and POSTKANTOOR (Case C-363/99, Paragraph 86). 

At first instance, the Patent and Registration Office held that the registered trademark covered goods in Class 30 of the Nice Classification (eg, pastries) which are normally eaten when consuming coffee or tea.

The office also held that, in relation to those goods, the trademark indicated their intended use, so that the relevant consumers would perceive the trademark as descriptive in nature and not as a means of describing the goods’ commercial origin. The trademark was therefore deemed to lack the distinctive character necessary for registration. Consequently, the trademark registration was partially cancelled with regard to those goods in Class 30 for which the trademark was descriptive.

The trademark holder appealed to the Patent Court of Appeal, without success.

The ruling is primarily of relevance to the Swedish market since the trademark is descriptive only to the general public in Sweden. However, fika - as a Swedish concept - has been exported abroad by Swedish entrepreneurs who have established cafés under the brand name fika abroad, for example in New York and London. Whether fika is descriptive under foreign trademark law remains to be seen.

Tom Kronhöffer and Evelina Lindgren, von lode advokat ab, Stockholm

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