Author: Dr. Manuela Ferrario
On November 13th, the EU General Court declared the invalidity of European Union trademark no. 007497191, owned by Chiquita Brands LLC, due to lack of distinctive character. The trademark represents a blue oval label with a yellow inner border and a blue outer border:
It must be acknowledged that the trademark owner fought hard to argue that the shape of the trademark in question was much more distinctive and detailed than just a simple oval: indeed, they claimed that the trademark consisted of an “ovaloid” shape created by the intersection of three Bézier curves, which, in reality, were three concentric elements whose combination resembled the layout of a racetrack.
However, based on consistent and well-established case law on this issue, the Court stated that a very simple sign made up of a basic geometric shape – such as the one in question – is not, in principle, capable of conveying a message that consumers can remember, and therefore will not be perceived as a trademark unless it has acquired distinctiveness through extensive use (see, for example, the General Court decisions of 29/09/2009, The Smiley Company v OHIM, T139/08, EU:T:2009:364, and 12/09/2007, Cain Cellars v OHIM, T304/05, EU:T:2007:271).
Indeed, Chiquita’s label would represent a minimal variation of an oval, and the elements it is composed of are not combined in any unexpected or particularly distinctive way.
Moreover, in the specific sector of bananas, oval labels are particularly common, as this shape allows the label to adhere better to the curved surface of the fruit.
The Court also rightly emphasizes that the relevant consumer, in this case identifiable as the general public (everyone buys bananas!), is unlikely to be familiar with Bézier curves, which are graphical representations of curves based on complex mathematical analysis, and would instead recognize them simply as the shape of the label.
A key point in the Court’s reasoning is the color scheme of blue and yellow. Indeed, colors and their combinations are generally not considered inherently distinctive, as they do not possess enough strength to convey specific information to consumers, and for this reason, they are not typically used in commercial practice as tools for product identification (see, on this point, the case law of the Court of Justice in the rulings of 06/05/2003, Libertel, C104/01, EU:C:2003:244, and 24/06/2004, Heidelberger Bauchemie, C49/02, EU:C:2004:384).
Finally, an interesting argument addressed by the Court was the relevance of market surveys to demonstrate that consumers recognize and associate a particular sign as a trademark.
Chiquita had submitted a market survey conducted in 2020 to show that consumers in Belgium, Germany, Italy, Sweden, and the United Kingdom associated the trademark with its owner.
However, the Court criticized this argument, stating that the inherent distinctiveness of a trademark must be evaluated from the time of filing. In this case, a survey conducted ten years after the filing could prove nothing.
Furthermore, the consumer sample involved was considered too small in relation to the total European population, and the questions asked did not meet the necessary criteria to ensure unbiased responses, in particular they were not not-leading enquiries.
The additional evidence provided by Chiquita, besides the market survey, was also deemed insufficient to prove acquired distinctiveness, which could only have occurred after the filing. It was found that the advertisements, labels, and online and social media use displayed a mark clearly incompatible with the one in the proceedings, as it included additional verbal (“CHIQUITA”) and/or figurative elements.
It is evident that the use should have concerned the mark as registered, i.e., the purely figurative version; however, the owner was unable to provide sufficiently convincing and adequate arguments and evidence for this purpose.
In light of all the reasons outlined above, the Court decided to reject Chiquita’s appeal, and thus the yellow/blue trademark became invalid.
It is still possible that Chiquita may decide to appeal the decision to the Court of Justice. If not, the decision will become final.
On the other hand, the French company that filed the invalidity action, Compagnie Financière De Participation (already present on the market with the first trademark shown below), has already applied for a new trademark application for a label intended for fruit:
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Pre-existing trademark |
New filing | Invalidated trademark |
 |
 |
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| EUTM n. 018825946 | EUTM n. 019077268 |
EUTM n. 007497191 |
In my opinion, the color perhaps too closely resembles a mark we are all familiar with…