Food for thought
Parties might have considered a coexistence agreement, suggests Serena Totino. O/714/19, Gousto (Opposition), UK IPO, 22nd November 2019
SCA Investments Ltd (SCA) filed three UK trade mark applications for the marks GOUSTO and GOUSTO logos for goods in classes 29 and 30, among others (the Applications).
The brand GOUSTO resulted from combining the words “gusto” and “gourmet”, and it is currently used by a popular UK start-up that delivers recipe boxes.
Giuliani SpA, an Italian company selling products for diabetics, filed three oppositions against the Applications, based on the similarity with the prior EU marks GIUSTO and GIUSTO logos (the Prior Marks) for goods in classes 29 and 30 (mainly fruits, vegetables, desserts, and coffee).
SCA subsequently filed an invalidity action against one of the Prior Marks in an attempt to suspend the opposition proceedings. However, the UK IPO held that such a suspension should not be allowed: in the event of a successful invalidity action before the EUIPO, the Opponent would have the chance to convert the EU mark and obtain national protection in the UK, given that the mark would be descriptive in Italian, not in English.
Because the Opponent operates mainly in Italy, the Applicant required the Opponent to provide proof of use of the oldest Prior Mark. The UK IPO was satisfied that the Prior Mark was used in the EU in light of a number of Irish catalogues and invoices related to products sold in Bulgaria, Italy, Malta and Ireland, amounting to some £50m worth of goods sold in the EU.
The UK IPO stated that the trade marks at issue are similar to a medium degree and that the goods in class 29 and 30 are similar to the extent that they cater for the same dietary needs. In fact, although all these goods are related to foodstuffs, some of them are not complementary or in competition with each other and will not be found in close proximity on the supermarket shelves.
The UK IPO decision better defined the scope of protection of the Applications, taking into account the goods for which the Prior Marks were protected, leaving the Applicant with full protection for goods and services in classes 16 and 39, which still suit the Applicant’s core business (instructional teaching material relating to food and the transport of goods).
This decision makes us wonder if a coexistence agreement focused on the core businesses of the parties would have been a more efficient approach to such a case. Certainly, this is one of those cases that will be missed after Brexit, given that EU marks will no longer be the basis of a UK opposition against a UK application.
Lastly, we note that the word mark GOUSTO has been refused before the EUIPO and found to be descriptive of the term “taste” in Greek. Overall, it’s not a rewarding brand choice for a start-up that is now facing a number of IP-related issues as part of its international business strategy. Although a catchy brand name may attract consumers in the short term, a “functional” brand is likely to avoid a few headaches for business owners, especially for young companies with limited resources.
Key points
- An EU trade mark that has not been put to use in the UK is sufficient to oppose a UK trade mark application, for the time being
- Reputation of a UK unregistered trade mark does not play a role in opposition proceedings
- An invalidity action at the EU level does not justify the suspension of a UK opposition proceeding if the invalidity grounds do not apply in the UK
Author
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Serena Totino
associate, K&L Gates LLP