BANANA BLUES

KEY POINTS

Basic geometric shapes and common colour combinations are not inherently distinctive

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Evidence of acquired distinctiveness must show the mark as registered and prove use throughout the EU

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While it may not be necessary to provide use evidence for every EU Member State individually, evidence must be sufficient to demonstrate a similar market situation in other Member States

MARK

The General Court (GC) here upheld a decision of the Board of Appeal (BoA), finding: that a figurative sign representing a blue rounded shape framed by yellow and blue lines lacked distinctiveness; that it was a slight variation of the basic geometric shape of an oval; and that oval shapes and such colour schemes were commonly used in relation to fruit. The evidence failed to show that the sign, as registered, had acquired distinctiveness through use.

Background

Chiquita Brands LLC (Chiquita) was the owner of a figurative EU trade mark registration (the Registration) covering food and beverages in classes 29, 30, 31 and 32 (shown). In May 2020, Compagnie financière de participation (Compagnie) filed an invalidity action against the Registration under Articles 59(1)(a) and 7(1)(b) of the EU Trade Mark Regulation (EUTMR), claiming that it lacked distinctiveness. The EUIPO’s Cancellation Division upheld that invalidity action.

The BoA later dismissed Chiquita’s appeal, finding that the Registration lacked inherent distinctiveness in respect of “fresh fruits” in class 31 and that it had not acquired distinctiveness. The BoA annulled the Cancellation Division’s holding as regards the remainder of the goods, on the grounds that Compagnie had not proven the invalidity of the Registration in relation to those goods. Chiquita appealed to the GC.

Shapes and colours

Chiquita argued that the BoA had incorrectly found that the Registration lacked inherent distinctive character in relation to “fresh fruits”, making errors assessing both its shape and colours.

In particular, the BoA had found that the Registration was a basic geometric shape and not registrable. Chiquita argued that its shape was “significantly more detailed”. It described the Registration as an “ovaloid” shape made up of three Bézier curves with specific shape elements, namely an “inner blue ovaloid”, framed by a “thin yellow ovaloid”, which in turn is framed by a “thin blue ovaloid”. Chiquita asserted that the combination of those elements resembled a racetrack, enhancing the distinctiveness of the Registration.

Upholding the BoA’s decision that the Registration was a minor variation of an oval and lacked distinctive elements, the GC confirmed that a basic geometric figure is incapable of indicating commercial origin. It also agreed that oval shapes are commonly used in the retail sector in relation to bananas, because it is easy to stick them on rounded fruit. Accordingly, the Registration, affixed to fresh fruits, would be perceived as purely decorative and not capable of differentiating Chiquita’s goods from others on the market.

Chiquita argued that the variety in the three colour elements, described as “blue (thin) – yellow (thin) – blue (wide)”, in a specific geometric shape, reinforced the distinctiveness of the Registration. Further, it argued that frequent use of the colours yellow and blue in relation to fresh fruits “cannot suffice to prevent registration” of its mark.

The GC confirmed that colours and abstract combinations thereof cannot be regarded as distinctive save in exceptional circumstances since they were not used to identify commercial origin in the absence of any graphic or word elements. The colours blue and yellow were primary colours and their combination did not display any complexity that would make that combination memorable to the relevant public.

The GC upheld the BoA’s finding that the colours blue and yellow were frequently used in connection with “fresh fruits” and that those colours did not depart from the customs of the sector. Accordingly, Chiquita’s Registration was devoid of inherent distinctive character.

Distinctiveness

The BoA had found that Chiquita’s evidence, mostly relating to four Member States (Belgium, Germany, Italy and Sweden), was insufficient to show that its Registration had acquired distinctiveness throughout the EU. This was because Chiquita failed to explain why the market situation was the same in the other Member States. The BoA also found that, except for a market survey, the evidence did not refer to the Registration but included additional figurative or word elements, particularly the word “Chiquita”.

Chiquita claimed that between 58% and 80% of the persons questioned in the survey would spontaneously associate the Registration with Chiquita. The GC noted that while opinion polls or surveys could constitute direct evidence of acquired distinctiveness through use, this was not the case here. Part of the survey had been leading, implying that the shape concerned corresponded to the logo of a particular fruit brand. Further, the survey only covered four EU Member States and its sample of 7,327 persons was not enough for its findings to be representative of the relevant public.

Statements made by wholesalers operating on the fresh fruit market in Belgium, Germany, Greece, Italy, Sweden and the UK confirming the intensive use of the Registration in those countries had limited evidential value to prove acquired distinctiveness as it did not represent the relevant public.

The GC also confirmed that while it was unreasonable to require proof of acquired distinctiveness in every EU Member State separately and that use evidence in certain Member States was likely relevant for all Member States concerned (especially where said States were in the same distribution network and treated as the same market in light of marketing strategies or geographical, cultural or linguistic proximity), Chiquita had not provided information to show that the market situation was the same in other Member States. Accordingly, it was impossible to assess the intensity or geographical extent of the use of the Registration. The GC therefore dismissed the appeal in its entirety.

Struggle continues

The judgment confirms that basic geometric shapes and common colour combinations on their own will struggle to obtain trade mark protection in the EU in the absence of compelling evidence that the sign has acquired distinctiveness through use. While it was accepted that one cannot prove distinctiveness in every EU Member State individually, proof that the market situation is the same in those States for which no evidence is available must be provided. In addition, use evidence must always show the mark as registered.

Désirée Fields is Legal Director at Pinsent Masons LLP
desiree.fields@pinsentmasons.com

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