Cheese, holes and weak distinctiveness: the General Court revisits Formula One Licensing v OHIM

[Marcel Pemsel]

Cheese, holes and weak distinctiveness: the General Court revisits Formula One Licensing v OHIM

Marcel Pemsel Tuesday, January 06, 2026 - 3D trade marks, distinctiveness, Formula One Licensing, General Court, Marcel Pemsel, trade marks

When does an earlier national trade mark enjoy “too little” distinctiveness to block a later EU registration? And when does such a finding amount to an impermissible challenge to its validity? In Savencia v EUIPO - Hofmeister Vermögensverwaltung (Forme d'un fromage) (T-481/24), the General Court grapples with the legacy of Formula One Licensing v OHIM in the context of a three-dimensional cheese shape.

Background

In 2018, Hofmeister Vermögensverwaltungs GmbH & Co. KG designated the EU in its International Registration for the following 3D trade mark:

 

It was registered for “milk and milk products, especially butter, cheese, cream, yoghurt, quark, dried milk for nutritional purposes; margarine, edible oils and fats”.

Savencia SA (“Savenica”) filed an opposition on the basis of a likelihood of confusion with the following earlier national trade mark, which is registered for “cheese”:

The Opposition Division of the European Union Intellectual Property Office (“EUIPO”) upheld the opposition for “milk and milk products, especially butter, cheese, cream, yoghurt, quark, dried milk for nutritional purposes; margarine”.

The EUIPO’s Board of Appeal (“BoA”) rejected the opposition in its entirety. It reasoned that the earlier mark had a low degree of distinctive character, resulting in a limited scope of protection. The contested mark was sufficiently distinct and fell outside of this scope.

Savencia filed an action with the General Court.

The General Court's Decision

The General Court upheld the action and annulled the BoA’s decision.

The decisive issue was whether the BoA was entitled to reject the opposition essentially on the ground that the earlier mark possessed only a weak degree of distinctiveness.

1. Likelihood of confusion and minimum distinctiveness

The judges recalled that the assessment of the likelihood of confusion requires all circumstances to be taken into account. Besides the similarity or identity of the signs as well as the goods and services, the distinctiveness of the earlier mark is a relevant factor in the overall assessment.

By reference to Formula One Licensing v OHIM, the Court held that a registered national trade mark must be accorded a minimum degree of distinctiveness. The Trade Mark Directive precludes the registration of national trade marks lacking distinctiveness. Further, the validity of a national trade mark cannot be challenged before the EUIPO, but only in national invalidity proceedings. This case law is based on the principle of coexistence of the EU trade mark with national trade marks. Characterising a sign as descriptive or generic is equivalent to denying its distinctiveness.

2. The BoA’s reasoning

The BoA had found that the distinctiveness of the earlier mark was weak, which resulted in a reduced scope of protection. The judges interpreted this to mean that the BoA did not deny the distinctive character or validity of Savencia’s trade mark.

However, the Court also considered the BoA’s analysis of the distinctive and dominant elements of the opposing trade marks, which is a step before determining the similarity of the signs. In that context, the BoA had found that:

a. the shape of the cheese represented in the earlier mark does not deviate significantly from the norms or customs in the relevant sector;

b. the flower shape served a technical function, namely indicating how to slice the cheese;

c. the hole in the middle served a technical function with regard to both the ripening and the stability of the cheese. It was deemed common knowledge that the edges ripen faster than the centre, which means that a central hole leads to more uniform ripening and to a better taste. Additionally, the central hole adds a stabilizing point and allows the cheese to be positioned on a plate or tray with a stick in the centre.

The BoA had also referred to a decision from the German Patent Court from 2009, where it found that a very similar (if not identical) shape of a cheese lacked distinctiveness.

For these reasons, the earlier mark had been deemed not to be perceived as an indication of the commercial origin by consumers.

3. Effective denial of distinctiveness

The Court found that the BoA formally recognized the distinctive character of the earlier mark but stated in other passages that its essential design features were descriptive. Considering the decision as a whole, the judges held that the BoA’s decision effectively denied the distinctiveness of the earlier mark by finding that its scope of protection was so limited that even minor differences in a few elements that were not technical or decorative were sufficient to refuse a likelihood of confusion.

This approach, the Court concluded, was incompatible with the principle established in Formula One Licensing v OHIM. The decision was therefore annulled. 

 

Comment

This decision, much like Formula One Licensing v OHIM, is open to debate.

1. From a legal point of view, it is difficult to grasp how the EUIPO, BoA or the General Court interfere with the jurisdiction of national trade mark offices merely by finding that a trade mark is non-distinctive.

a. The EU instances do not declare a national trade mark invalid when they characterise it as descriptive or non-distinctive.

b. Different points in time are decisive for the assessment of the distinctive character: For absolute grounds of refusal, only the filing or priority date is decisive. For opposition or invalidity proceedings based on relative grounds, the distinctiveness at the filing or priority date of the later mark (and, depending on the outcome of EUIPO v Nowhere (case C-337/22 P) and Shopify v EUIPO (case C-751/22 P), potentially the date of the decision in the opposition/invalidity proceedings) is relevant. There can be a gap of several decades between the filing/priority date of the earlier mark and the later mark. The EU instances must be entitled to take the factual development of a term that used to be distinctive but became descriptive into account.

c. It is consistent case law that the national and the EU trade mark systems are autonomous and independent from each other. A decision in one system is not binding for the other. Therefore, a finding of non-distinctiveness of a national mark in EU opposition or invalidity proceedings does not bind a national trade mark office in invalidity proceedings based on absolute grounds against the earlier mark.

2. The EU instances apply Formula One Licensing v OHIM also to EU trade marks, even though the argument of a lack of jurisdiction does not support this position. The EUIPO is obviously competent to declare an EU trade mark invalid.

3. Is Formula One Licensing v OHIM really to be understood as an obligation of the EU instances to ignore the descriptiveness or non-distinctiveness of an earlier trade mark?

They have to assess the dominant and distinctive elements. If just one element of the earlier mark is non-distinctive, the EU instances can say so, but if the entire earlier mark is non-distinctive, they cannot?

4. What will be the consequence of this decision? Probably just a change in terminology but not in substance. In the assessment of the distinctiveness of the earlier mark’s elements as well as in the determination of its overall distinctiveness, the EUIPO and the BoA can replace “non-distinctive” with “weakly distinctive”, afford the earlier mark a minimum level of distinctiveness and, therefore, a minimum scope of protection. In such a case, the General Court cannot criticize the BoA for violating the Formula One Licensing v OHIM principle. The result will be the same and Savencia’s victory might be short-lived.