Conguitos – a reminder that a mark’s reputation can be limited

On 7 June, the General Court dismissed the appeal lodged by Chocolates Lacasa against an entrepreneur from Alicante who had registered the mark “Conguitos” for drugstore products. The General Court upheld the decision of the EUIPO refusing exclusive use of the term “Conguitos” for the famous chocolate-coated peanuts. The well-known Spanish chocolate company Chocolates Lacasa already lost in 2020 in an analogous case against a children’s shoe company.

By an application filed on 9 January 2012, Mariano Esquitino (Alicante) sought to register the figurative mark “Conguitos” for goods and services in Class 3 (cosmetics, cleaning substances), 14 (jewellery) and 18 (leather goods) of the Nice Classification. Chocolates Lacasa filed an opposition against the EU trade mark application evoking Article 8(5) of the EUTMR protecting marks “with a reputation” against filings of identical or similar marks by third parties where the new mark takes unfair advantage of, or can be detrimental to the reputation of the earlier mark. They claimed that the applicant was taking unfair advantage of the reputation of the earlier trade mark registered for goods in Class 30 (confectionery and chocolates, in particular, chocolate-coated peanuts). The Opposition Division rejected the opposition in its entirety. On 31 March 2021, Chocolates Lacasa appealed this decision within the EUIPO.

The Fifth Board of Appeal of the EUIPO also dismissed the appeal. It stated while the previous mark did have a reputation, it was limited to chocolate-coated peanuts. Therefore, it was not an exceptional renown that would lead the relevant public to establish a mental link between the conflicting marks for such different products.

On 7 June 2022, Chocolates Lacasa (“the appellant”) lodged an appeal before the General Court seeking the annulment of this decision and a declaration of invalidity of the contested mark for classes 3, 14 and 18, evoking Article 8(5) of the EUTMR.

In particular, the appellant submitted that the Board of Appeal failed to consider the “degree of similarity, very close to identity” between the signs and the distinctive character of the earlier mark. Moreover, it argued that the points of sale of the two products coincided and that the contested mark had taken unfair advantage of the reputation or distinctive character of the earlier mark.

The General Court argued that the Board of Appeal was right to find that the goods in question were dissimilar. Indeed, by their nature, purpose, method of use and distribution channels, chocolate-coated peanuts differ from the goods in Classes 3, 14 and 18 of the contested mark and are neither complementary nor in competition with each other. Furthermore, it stated that the Board of Appeal did consider the degree of similarity of the signs, but it was highly unlikely that the public would establish a mental link between the conflicting marks and attribute the same origin to them as the goods are so dissimilar, even though they may be sold in the same shops.

Regarding the reputation of the previous mark, the General Court considered that the appellant did not show that its mark enjoyed a reputation that could be extended to the public of the contested mark, nor that the positive qualities in respect of chocolate-coated peanuts could be transferred to goods of the contested mark, such as cleaning preparations in Class 3 or jewellery in Class 4.

Finally, the Court recalled that, according to the case-law, in order to benefit from the protection provided for in Article 8(5) of EUTMR, the proprietor of the earlier mark must prove that the use of the mark applied for would take unfair advantage of it and would be detrimental to them. The existence of an unfair advantage gained from the reputation of an earlier mark results from the fact that a third party uses a mark similar to the earlier mark and by such use seeks to position itself in the space occupied by the earlier mark in order to benefit from its power of attraction, reputation and prestige.

The General Court concluded that, in the absence of a link between the marks at issue, the use of the mark applied for cannot take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. It therefore dismissed the appeal in its entirety.