Marks and Spencer v Aldi – Colin v Cuthbert
M&S has launched trade mark infringement proceedings against Aldi over their famous caterpillar cake.
Discount supermarket giant Aldi has finally been victorious in the long-running legal battle over the registration of the EU trade mark BISTRO REGENT in relation to wine by a French restaurateur.
Aldi is the long-standing holder of a trade mark registration for REGENT – first registered in Germany in 1933 and renewed in 2012 (registration no. 452178). That earlier trade mark is registered in relation to wine and spirits (beverages) in class 33 of the Nice Classification of trade marks.
Aldi used the German registration as the basis for an opposition to BISTRO REGENT (presented in figurative form), which was the subject of an EU trade mark application by ‘Vanhove’, a French restauranteur. Vanhove sought registration for his mark in relation to wine in class 33.
Aldi’s initial opposition was on the grounds that registration of BISTRO REGENT would create a likelihood of confusion on the part of the public between that mark and Aldi’s own trade mark REGENT (per Article 8(1)(b) of the EU Trade Mark Regulation). The initial opposition was successful, and the EUIPO Opposition Division blocked registration of BISTRO REGENT
Vanhove promptly appealed the decision just over a month after it was given. His grounds for appeal were that REGENT – the trade mark registered for 90 years – had not in fact been in genuine use and that the evidence submitted by Aldi to that effect had been insufficient. The EUIPO Board of Appeal however dismissed this argument, finding that the evidence submitted by Aldi (including invoices, photographs of store shelves, promotional brochures, webpages and an affidavit) had in fact been sufficient to prove use of the earlier mark.
The Board of Appeal also agreed with the Opposition Division that there was a likelihood of confusion. As the relevant public at issue in this case was the German general public, and the word ‘regent’ was deemed to have an average degree of distinctiveness for the German public, the Board of Appeal found that the signs were sufficiently similar to warrant a decision that there is a likelihood of confusion between the two trade marks.
Aldi’s use of REGENT
The crux of Vanhove’s appeal to the EU General Court was that Aldi’s trade mark REGENT is used alongside the word ‘weinbrand’, which he asserted would alter the distinctive character of the trade mark and therefore upend the assumptions that the Board of Appeal’s decision was based on.
The General Court rejected this argument, and took the same view as the EUIPO. They agreed that the element ‘weinbrand’ (meaning brandy in German) is descriptive of the goods covered by Aldi’s registration (spirits), and therefore non-distinctive of the goods at issue. The judgement was therefore that, as ‘weinbrand’ is devoid of distinctive character, it does not alter the distinctiveness of the REGENT trade mark overall, and so the finding of a likelihood of confusion stands.
The Court also came down on the same side as the Board of Appeal on the question of whether Aldi’s proof of use was sufficient. This involved a review of all the evidence provided by Aldi, some of which was undated and so did not necessarily in itself show use in the relevant period. However, the General Court stated that even undated evidence ‘may be taken into account and assessed in conjunction with the rest of the evidence, because it can offer proof of real and genuine commercial use of the mark’. Thus, the Board of Appeal’s consideration of undated evidence was deemed correct (in the circumstances), and the evidence admissible.
Distinctiveness of elements of the two marks
Vanhove made the argument that ‘regent’ is descriptive with regard to wine as it describes a variety of grape, which Vanhove submitted is the main ingredient in wine and brandy and which is used in German regions and thus known to the relevant German public. The General Court dismissed this, agreeing with the Board of Appeal that ‘regent’ in the mark applied for will be perceived as a reference to the term ‘regent’, the primary meaning of which in German is ‘reigning prince, monarch, crowned ruler’.
Vanhove also made the reverse argument with regard to the mark which was the subject of his own application, BISTRO REGENT. In particular, he argued that the word ‘bistro’ is distinctive with regard to wine. The General Court also dismissed this argument, judging that ‘bistro’ will easily be understood by the German general public as a reference to a ‘small, usually simpler restaurant’, and since wines are generally served with food the word is therefore weakly distinctive with regard to wines.
As Vanhove’s arguments against the decision of the Board of Appeal were deemed not to be well-founded, the initial issue of whether his trade mark application should in fact have been allowed was never considered. Therefore, The Court ordered Aldi’s costs in this matter to be paid by the other side, and the 90-year reign of the REGENT trade mark will go on.
The case is interesting as it shows that, under the right circumstances, even undated evidence can be taken into account. In providing evidence in trade mark proceedings all available evidence should be assessed for filing with the office in question. One of the key roles of a trade mark attorney in such proceedings is to review and assess the evidence provided in order to put forward the best case and nothing should be dismissed at first glance.
If you have any questions about your trade mark registrations, please get in touch to speak to one of our attorneys.