Who is the queen of fruits?

[Marcel Pemsel]

Who is the queen of fruits?

Marcel Pemsel Monday, June 17, 2024 - acquired distinctiveness, CHIQUITA QUEEN, General Court, likelihood of confusion, Marcel Pemsel, Red Queen, T-79/23

The reputation of a trade mark leads to a broader scope of protection. But it can also help defend against earlier rights, as a recent decision from the General Court shows (case T-79/23).

Background

Chiquita Brands LLC (‘Chiquita’) filed an application for registration of EU trade mark ‘CHIQUITA QUEEN’. It covered ‘fresh fruits’ in class 31.

Jara 2000, SL (‘Jara’) opposed this application based on EU trade mark no. 6783955, registered, inter alia, for ‘fresh fruit’ and the following sign.

Upon request of Chiquita, Jara provided sufficient evidence of use of its trade mark for ‘fresh fruit’ and the Opposition Division of the European Union Intellectual Property Office (‘EUIPO’) upheld the opposition. The Board of Appeal of the EUIPO (‘BoA’) dismissed Chiquita’s appeal. Chiquita brought an action before the General Court.

The General Court’s decision

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

The judges confirmed the BoA’s findings that the relevant public consists of the average consumer in the EU, whose level of attention is, at most, average and that the assessment of the likelihood of confusion may be limited to the Spanish public.

Distinctive and dominant elements of the signs

The General Court disagreed with the BoA’s assessment of the distinctive and dominant elements of the signs at issue.

1. With respect to the earlier mark, the BoA was correct to hold that the words ‘fincas’, ‘jara 2000’ and ‘tabirana’ in the red circle were so small that they could be regarded as “secondary, or even negligible”.

2. Concerning the contested application, the word ‘CHIQUITA’ was found to be inherently weakly distinctive for some fruits because the term could be used to refer to something tiny or small in Spanish.

Unlike the BoA, the judges took into account that ‘CHIQUITA’ enjoys a reputation for fresh fruits in Spain. Therefore, the Court found the term not to have a weak distinctive character in the contested application.

The EUIPO argued that the case law does not allow taking the reputation of the contested application into account. In their response, the judges distinguished between

• The distinctiveness of the earlier mark as a whole (although the EUIPO’s argument concerned the distinctiveness of the contested mark as a whole), which is relevant to the overall assessment of the likelihood of confusion only, and

• The determination of the distinctive elements of the signs, which must be done for the assessment of the similarity of the signs.

Without providing any further arguments, the General Court concluded that the reputation of the element ‘CHIQUITA’ is relevant.

3. The Court also disagreed with the BoA on the distinctiveness of the word ‘queen’. The BoA did not consider it to be used as widely as ‘king’ in order to describe characteristics of goods or to convey a laudatory connotation. The judges found that, like the words ‘king’ and ‘royal’, the term ‘queen’ carries a laudatory connotation praising the quality of the goods in question. These words are part of the basic English vocabulary and will (even) be understood by the Spanish public.

As a consequence, the word ‘CHIQUITA’ was found to have a higher degree of distinctiveness in the contested application than the word “QUEEN”.

Similarity of the signs

On that basis, the General Court held that the visual similarity of the signs is weak at most because of the differences in length and the word ‘CHIQUITA’, which is more distinctive than the common word ‘QUEEN’ and also placed in the beginning. The figurative elements of the earlier mark reinforce the differences between the signs.

The phonetic similarity was considered to be low on account of the different pronunciation of ‘CHIQUITA’ and ‘Red’ in the beginning of the signs.

Conceptually, the Court considered the low distinctive character of the common word ‘QUEEN’ and found a low degree of similarity at most.

Eventually, the judges denied a likelihood of confusion despite identical goods. They found the differences between the signs to be sufficiently pronounced so that the public would not believe that the goods come from the same or economically linked undertakings.

Comment

A couple of thoughts on this decision:

1. It is good to see that the Spanish public is considered to understand at least a little bit of English. Consumers in Spain are often the ‘wild card’ in opposition and invalidity proceedings dealing with trade marks containing English words because a significant part of the Spanish public is (or was?) considered to have low proficiency in English (e.g. case T-356/14 at para. 54).

2. The General Court’s finding that the reputation of ‘CHIQUITA’ in Spain must be taken into account would have deserved some (more detailed) explanations. As the EUIPO rightly argued and the Court did not comment on, the case law indicates that the reputation of the contested mark has no impact on the assessment of the likelihood of confusion (e.g. case T‑352/20 at para. 23). If that premise is true, then why should the reputation of a part of a sign be taken into account?

But the premise is debatable. Why should the reputation of the (entire) contested mark not be considered? The EU courts have not provided any convincing reason for their position. Further, the case law seems inconsistent because it makes an exception for the reputation of an individual’s name since the Barbara Becker decision of the Court of Justice of the EU (‘CJEU’, at para. 37). The CJEU argued that the well-known status of the person’s name for which trade mark protection is sought “may obviously influence the perception of the mark by the relevant public”. Why does this only apply to names of individuals but not to reputed trade marks? Does the reputation of a name – regardless of whether that of a person, a company or a good/service – not shape the perception of that name?

3. It would have been interesting to see the General Court discuss an independent distinctive role of the word ‘QUEEN’ in the contested application. ‘CHIQUITA’ is obviously a well-known trade mark and trade name. Therefore, the term ‘QUEEN’ may enjoy an independent distinctive position in the later mark. However, there are several questions on which there is no CJEU case law (yet), in particular whether such a position can exist even though not the entire earlier mark has been included in the later mark and whether a weakly distinctive element can take an independent position.