Food group Kraft, owner of the Oreo brand, has succesfully 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) that rejected the registration of the trademark "Gullon Twins Cookie Sandwich" in class 30 (cookies), with the following graphic representation:
The opposition was based on two previous trademarks; a European 3D trademark that reproduces the cookie itself, and a Spanish trademark that reproduces its packaging (see images). Kraft, through its company Intercontinental Brands, was succesful thanks to the well known status of the prior trademarks.
It is worth noting that Gullon chose a completely different name for their version, "Twins" and the similarity was found on the product as depicted on the packaing. Indeed the Oreo cookie is characteristic not so much for its name but for its appearance and configuration: two round black cookies joined by white cream.
The court acknowledges that Gullon would be obtaining an unfair advantage from the Oreo brand as the central elements of the figurative part of the trademark are very similar. As stated in Article 5 of the Community Trademark Regulation, well-known trademarks have the additional protection of preventing 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. "
It is important to highlight that this decision refers to the possibility of registering the Twins cookies packaging 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 on trademark infringement and unfair competition claims. If they do, they now have the opinion of the EUIPO to support them.
The full decision is available in Spanish and French, here.
Victoria Sofía Martín Santos
Esquivel & Martin Santos
Trademark, Patent and IP law firm in Spain