[Guest post] EU General Court invalidates Chiquita trade mark for bananas as it considers it devoid of distinctive character

The IPKat has received and is pleased to host the following guest contribution by former GuestKat Nedim Malovic (ASSA ABLOY), commenting on a recent decision of the General Court concerning a figurative trade mark held by Chiquita. Here is what Nedim writes:

EU General Court invalidates Chiquita trade mark for bananas as it considers it devoid of distinctive character

by Nedim Malovic

Earlier this month, the BBC brought us the quirky tale of a Swedish minister’s phobia of bananas—yes, bananas (read more here). If that wasn’t surreal enough, the EU General Court decided to peel back its own banana-related deliberations, contributing to what can only be described as Europe’s ongoing case of “bananaphobia.”

In a judgment that’s ripe for discussion (T‑426/23), the EU General Court considered that oval-shaped labels (such as the below Chiquita logo below) are commonly used in the banana industry as they are easy to stick onto curved fruits. As such, simple geometric shapes are devoid of distinctive character in this sector.

But it gets juicier. The decision not only casts doubt on the enduring status of the Chiquita logo but also underscores how tricky is it to prove “acquired distinctiveness” across the EU. Add to that a reminder from the Court that certain color schemes do not automatically make a mark unique, this being a theme we’ve seen crop up in cases like Andreas Stihl v EUIPO (Case T-193/18).

So, is this a banana drama for the ages? Quite possibly. Let’s unpack it further.

Background

In May 2020, Compagnie financière de participation (the Intervener) submitted a declaration of invalidity against the below EU trade mark (EUTM) held by Chiquita Brands, covering goods in (amongst others) Classes 31 (fresh fruits and vegetables) and 32 (fruit juices) the Nice Classification:

The mark was declared invalid by the EUIPO Cancellation Division pursuant to Article 59(1)(a) of Regulation (EU) 2017/1001 (the EUTMR), and the decision was appealed by Chiquita Brands to the EUIPO First Board of Appeal (the Board) in December 2021.

The Board dismissed the appeal in respect of ‘fresh fruits’ in Class 31, finding that the contested mark was devoid of any distinctive character for those goods within the meaning of Article 7(1)(b) EUTMR. The Board also considered that it had not been established that that mark had acquired distinctive character through use for the purposes of Article 7(3) of that regulation. The decision was annulled in respect of the remaining goods covered by the mark.

Chiquita Brands subsequently appealed the decision to the EU General Court, challenging the Board’s findings concerning the invalidation of the mark for fresh fruits in Class 31.

Reasoning

In its judgment, the General Court essentially upheld the Board’s findings and declared the mark invalid in respect of fresh fruits.

In particular, it reasoned that neither the shape nor the blue and yellow colour scheme conferred distinctive character on the mark. The shape of the mark corresponds to that of a simple geometric figure, with no easily and instantly memorable characteristic.

Kats going bananas

Furthermore, it found that oval labels are commonly used in the banana sector. The shape was, consequently, not capable of attracting the attention of the public or enable it to identify the commercial origin of the fresh fruits designated by the mark.

As regards the colour scheme, the General Court considered that the mark comprises of a combination of primary colours common in the fresh fruits business and its use in the mark did not make it particularly characteristic or striking. Those colours were therefore not capable of distinguishing those goods.

According to the General Court, Chiquita Brands did not succeed in demonstrating that its mark, as registered, had acquired, for the entire territory of the European Union, distinctive character through use that would enable the commercial origin of the goods in question to be identified.

First, most of the evidence submitted referred only to four Member States, and it was not established that the situation in the fresh fruit market in those countries would be the same as in the other Member States.

Secondly, in almost all the evidence, the mark appeared with additional figurative or word elements, in particular the word ‘chiquita’.

Comment

As stated in the opening, the present case reinforces that distinctiveness of simple geometric shapes is difficult to invoke successfully. Demonstrating that such marks have acquired distinctive character across the EU can be also challenging, as it requires proving notoriety across a substantial part of that territory. The threshold is high and demands significant evidence to be submitted by rights holders that are forced down to go down this route in lack of better options.