The ruling of the General Court of the European Union, in case T-426/23, concerned the challenge to the figurative European Union trademark consisting of a blue and yellow oval, used for the marketing of fresh fruit, in particular bananas.
The Court declared the trademark partially invalid, confirming that this configuration does not possess distinctive character either intrinsically or through acquired use.
This decision reflects the need to comply with the specific distinctiveness requirements set out in the European Union Trade Mark Regulation (EUTMR) and provides an important lesson on the characteristics of trademark distinctiveness.
Intrinsic distinctiveness: the geometric shape and the color combination
The first aspect analyzed by the Court is the issue of the intrinsic distinctiveness of the trademark. Pursuant to Article 7(1)(b) of the EUTMR, a trademark must be distinctive in order to be registered, i.e. it must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.
In this case, the Chiquita trademark consisted of a simple oval, combined with the colors blue and yellow.
The Court observed that the oval, as a basic geometric shape, does not possess an intrinsic distinctive character. It is, in fact, a minor variation of an elementary geometric figure that is not capable of communicating to consumers a clear and memorable message regarding the commercial origin of the products. Furthermore, the banana sector is characterized by the common use of oval labels, which are particularly practical for adhering to the curved surface of the fruit.
In this context, the oval would not be perceived by consumers as a distinctive indicator of the brand, but rather as a simple decorative element. Consequently, the oval cannot attract the public’s attention in such a way as to associate it with the specific producer of the bananas, as required by trademark law.
In addition to the geometric shape, the Court examined the combination of blue and yellow colors. Although colors are distinctive elements in some cases, in this circumstance the combination of primary colors was found to be simple and lacking in complexity to make it particularly memorable or recognizable.
The use of primary colors does not confer sufficient distinctive character to the mark, as it is a combination that does not significantly distinguish itself from other possible common visual combinations.
Acquired distinctiveness: the insufficiency of evidence of use
Article 7(3) of the EUTMR allows for the registration of a trademark which, although not possessing intrinsic distinctiveness at the time of registration, has acquired distinctiveness through continuous use in the market. In other words, a trademark that is not initially distinctive can become distinctive if, through use, consumers begin to associate it with a particular supplier of goods or services.
However, the Court confirmed that, in the specific case, the trademark had not acquired distinctiveness. Although Chiquita had submitted evidence of use of the trademark in some Member States of the European Union (Belgium, Germany, Italy and Sweden), the Court considered that this evidence was insufficient to demonstrate that the trademark was perceived as an indicator of commercial origin throughout the European Union.
The Court emphasized that the evidence presented focused mainly on a limited number of countries, without demonstrating that the market situation was homogeneous in all Member States. Furthermore, Chiquita had not provided any evidence that the mark had been used consistently through the same distribution network, the same marketing strategy or that there were cultural or geographical similarities between the different countries.
Therefore, the Court considered that it could not be assumed that the perception of the trademark was the same throughout the European Union, as the circumstances of the fresh fruit market could vary considerably from country to country.
The need for adequate evidence for the acquisition of distinctive character
Another relevant aspect that emerged in the judgment is the importance of presenting sufficient and relevant evidence to demonstrate that a trademark has acquired distinctiveness through use.
Evidence of use must be presented in a comprehensive manner and must be able to clearly demonstrate that consumers recognize the mark as a distinctive sign of the commercial origin of the products, even in the absence of additional or decorative elements.
In the case at hand, the Court held that the evidence provided was not sufficient to support this argument, as it did not clearly demonstrate that the blue and yellow oval was identified exclusively with the Chiquita company.
Implications of the judgment
The decision of 13 November 2024 represents an important guideline for companies wishing to register figurative trademarks similar to geometric shapes or simple color combinations.
The Court confirmed that the Chiquita trademark does not possess an intrinsic distinctive character and that the evidence of use provided was not sufficient to establish that the trademark had acquired distinctiveness throughout the European Union.
The decision represents an important precedent in the field of trademark distinctiveness and provides useful guidance for future legal disputes in the field of figurative trademarks and acquired distinctiveness.
Carlo Callea