The food conglomerate Kraft, owner of the Oreo brand, has blocked the registration in the EU of a version of their famous "sandwich cookie" by Spanish company Gullón.
The General Court of the European Union confirmed in a judgment of May 28 the previous decision by the EU Intellectual Property Office (EUIPO) to reject the registration of the trademark "Gullon Twins Cookie Sandwich" in class 30 (cookies), with the following graphic representation:
Gullón's filing was opposed by Intercontinental Great Brands (a Kraft group company), based on two previous trademarks; a European 3D brand that reproduces the cookie itself, and a Spanish brand that reproduces its packaging.
EUIPO had their decision confirmed not to allow the registration given the notoriety of the US brand.
The Oreo cookie is characteristic not so much for its name but for its appearance and configuration: two round black cookies joined by a white cream as if it were a sandwich. And it is exactly that same product that is reproduced in Gullón's trademark application.
Although it is evident that the "Twins" wordmark is dissimilar to "Oreo", the court acknowledges the similarity of the central elements of its figurative part creates an association in the mind of the consumer and an unfair advantage to Gullón. As stated in Article 5 of the Community Trademark Regulation, well-known trademarks have additional protection, and that is to prevent third parties from taking unfair advantage of their fame.
In the words of the EUIPO Board of Appeal, "in view of the scope of the reputation of the prior brand and the fact that the products are identical, for daily consumption and that they are sold side by side in supermarkets, the Product marketed under the requested brand will easily attract the attention of the consumer, as it will remind them of the previous brand that they know well. (...) Although the consumer does not confuse these brands, they will see the identical product of the appellant as a possible substitute for the offered product (...) and will understand that it has similar characteristics. The appellant would thus take advantage of the reputation and investment in advertising of the previous brand to sell her own product. "
Lastly, it is important to highlight that this decision refers to the possibility of registering the Twins cookies as a trademark, but for the time being nothing prevents Gullón from continuing to market the product itself. However, with this decision at hand it would not be surprising if the American brand chose to also see Gullon in court regarding in trademark infringement and unfair competition.
The full decision is available in Spanish and French, here.
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