Aldi Gourmet trademark: CFI on earlier national marks

The Aldi Gourmet brand is well known and has been protected by the EU since 2010. For almost as long, there have been invalidity proceedings against this Aldi Gourmet trademark, based on earlier national trademarks. In these proceedings, the European Court ruled on the evidence of the earlier national trademarks including the following interesting aspects:

Can a descriptive term like Gourmet be a permissible national word mark at all?
And can the use of the earlier national marks also be valid in an altered form?

Aldi Gourmet - a trademark dispute lasting for years

In August 2010, Aldi GmbH & Co. KG (Germany) applied for the word and figurative mark Gourmet as a European trademark. In the following January 2011, Miquel Alimentació Grup, SA (Spain) filed an opposition against the registration of the application trademark, invoking its own earlier, national trademarks Gourmet, which have been protected as Spanish word marks and also as Spanish figurative marks for much longer.

Since then, the Gourmet trademark has been contested between the two parties through many instances. For example, as early as December 2016, the European Court (CFI) rendered a judgment between the same parties in this dispute, by which the CFI recognised that the shape and the colour of the background of the word element "Gourmet" are purely decorative and subordinate elements in relation to that word element (CFI, 15 December 2016, Gourmet, T-212/15, not published, EU:T:2016:746, para. 57).

In March 2018, Miquel Alimentacio Group, the legal predecessor of the applicant Transgourmet Ibérica, SAU (Spain), filed an application for a declaration of invalidity of Aldi's Gourmet trademark with the EUIPO. This was unsuccessful: the Cancellation Division and also the Board of Appeal of EUIPO rejected the application for a declaration of invalidity. They said that the evidence submitted by the applicant did not prove the use of the earlier mark as registered.

Transgourmet Ibérica challenged this decision before the European Court (CFI), which has now ruled on it on (CFI, T 102/22, 1 March 2023).
The applicant from Spain based its action in particular on the following 3 pleas in law and allegated:

1. that the Board of Appeal assessed the distinctive character of the earlier mark before examining the evidence of genuine use submitted by the applicant.

2. that the evidence of use was incorrectly assessed, in particular,
because the Board of Appeal wrongly followed the test of proof of use which applies where the mark has been used in a form other than that in which it was registered
and that it was wrongly held that only the evidence showing the affixing of the word 'gourmet' to the goods or their packaging was capable of proving genuine use of the earlier mark (but not invoices, brochures and the like).

3. that it had been wrongly found that the use of the mark had been proven in a form differing in elements from the registration

The CFI explained the reasoning of this case in detail.

Term Gourmet to be classified as descriptive in general?

In particular, in paragraphs 36 and 39 of the contested decision, the Board of Appeal had found only the term 'gourmet' to be descriptive and not the earlier Spanish mark in its entirety. However, the term gourmet is the only term in the earlier Spanish word mark.

The CFI explained that by classifying the sole term of the national mark as descriptive, the Board of Appeal denied its distinctive character. However, since according to the case-law, registration of a national mark means that it has a minimum degree of original distinctiveness, the Board of Appeal had erred.

The Court pointed out that the validity of an international or national trademark could not be challenged in the context of proceedings for registration of an EU trademark, but only in the context of cancellation proceedings initiated in the Member State concerned. It could therefore not be relevant before the European Court, nor before the EUIPO, whether a descriptive term such as gourmet could be a permissible national word mark at all.

Findings on evidence

The CFI also disagreed with the Board of Appeal with regard to the findings on evidence. The Board of Appeal wrongly considered that those elements, since they related to the term 'gourmet', which it considered to be descriptive of the goods, did not prove use of the mark which could indicate the commercial origin of the goods. The Board of Appeal erred in these findings, the CFI ruled.

In order to assess the genuine use of a contested mark, an overall assessment must be made, taking into account all relevant circumstances. Therefore, packaging, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and written statements, for example, must also be taken into account, the CFI explained.

Proof of use of the trademark in altered form

Finally, the court pointed out that proof of use of an earlier trademark must also be admissible in a form that deviates from the registration in elements - if this does not affect the distinctive character of the trademark. In the present case, a chef's hat had been added above the word mark. But because of its small size, the chef's hat was neither conspicuous nor dominant, the CFI ruled.
Moreover, the phonetic aspect of the term "gourmet" remained clearly recognisable. And, the chef's hat was a banal and everyday element in the food sector, the court added.

In these circumstances, the additional figurative elements are not likely to affect the distinctive character of the earlier word mark GOURMET as registered, the CFI ruled.

In conclusion, the CFI therefore annulled the decision of the Board of Appeal of EUIPO of 14 December 2021 (Case R 862/2021-2), which had dismissed the application for a declaration of invalidity of the Aldi Gourmet mark.

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