Currently, the usual behaviour of well-known corporations regarding its commercial strategy is to prevent competitors from using similar brands in order to protect their trade mark rights. Nevertheless, sometimes those companies’ rights are the ones that are non-compatible with third smaller parties’ rights, as we will see from the following lines.

In the present case, it is the small company holding the trade mark, since it owns a prior and similar sign to that of a big company in Spain within the food industry. As a consequence, they have managed to push their trade marks in the market, preventing the big players from using them for certain products, which is needless to say essential in the food business nowadays. These are the facts in question:

On 2 April 2013, the Spanish multinational food company The GB Foods S.A (more known in Spain as Gallina Blanca) filed before the EUIPO an application for the trade mark ‘YATEKOMO’ for products in classes 29 and 30. In August 2013, the application was granted.

Under these circumstances, the Spanish Limited Liability company YATECOMERÉ initiated an invalidity action against all the products covered by the ‘YATEKOMO’ trade mark (which in translation means: ‘I eat you now’) on the basis of the prior Spanish trade mark ‘YATECOMERÉ’ (which means: ‘I will eat you later’). The marks in conflict were the following:

 

The EUIPO Cancellation Division Resolution of 15 June 2016 partially upheld the invalidity action for some of the products in classes 29 and 30. Gallina Blanca appealed this Resolution on 16 August 2016.

On 13 March 2017, the Court (Fifth Board) of Justice of the European Union issued a resolution dismissing the appeal filed by Gallina Blanca Foods S.A., and consequently, confirming what the EUIPO Cancellation Division had decided.

What is the Court Board´s opinion?

The Court considered that both signs showed more visual resemblances than differences.The reasoning behind this was that visually both signs comprise the words ‘YA’ and ‘TE’ following the verb ‘COMER’ (‘to eat’). The only difference is the verbal tense and the K instead of the C which is the same sound in Spanish.

Furthermore, the Board also agreed with the Cancellation Division when it said that both signs have a high degree of phonetic likeness (only changing the ending of the sign by ‘ERE’ vs. ‘O’). The phrase ‘el vacio que te llena’ was considered minor, since the Spanish consumer would not pay attention to it.

From the conceptual level, the appealed resolution established that the public of the relevant territory would perceive the prior sign ‘YATECOMERÉ’ as an expression meaning ‘te comeré’ (to eat food at a later stage or in the future). Whereas the mark at issue ‘YATEKOMO’ – while it is technically not correctly written – the consumer would perceive it as ‘que te como ahora’, being translated to ‘I eat you now’.

Accordingly, the Office concluded that both signs would be associated with a comparable meaning to the act of eating, becoming conceptually very similar.

Additionally, the Office confirmed that the products at issue were partially identical and partially similar, in different degrees. These products are aimed to the general public, with an average level of attention. All the foregoing leads to a likelihood of confusion in the market, carrying out an impossibility of coexistence of products that are perceived as similar.

This decision provides value regarding the visual, phonetic and conceptual comparison between trade marks. This is due to the Court (Fifth Board) of Justice of the European Union having ruled that the word element YATECOMERÉ was the dominant one. Hence, this sign is used to determine the likelihood of confusion.

The Court shares the opinion of the Cancellation Division about the fact that there is identity within some parts of both signs: YATEKOM and YATECOM.

This Decision shows the importance of doing a proper trademark search of precedent registrations before filing a tardemark.

What are the practical consequences of this decision?

– The title holder of YATEKOMO loses its trade mark protection, opening a window for potential infringement actions on the basis of confusion with YATECOMERE.

– The cessation of use of the name YATEKOMO for the goods lacking protection and their withdrawal from commerce. Both have significant economic effects for Gallina Blanca.

In conclusion, this decision shows – amongst others – the importance of the marketplace differentiation, of doing a proper trade mark search of precedent registrations before filing a trade mark, as well as the protection and defence of the trade mark rights.