Fruitless effort? Chiquita loses a-peel before the General Court

Obtaining trade mark protection for purely figurative marks can be a complex business. Such marks frequently encounter absolute grounds challenges on the basis of distinctive character and, while such challenges can be overcome, particularly through the proof of acquired distinctiveness, this can be difficult.

This was recently demonstrated in a General Court decision, where Chitquita Brands LLC (“Chiquita”) ‘slipped on the banana peel’ that is the evidentiary burden of proving acquired distinctiveness. 

Background

Chiquita was the registered proprietor of the below figurative EU mark for goods in classes 29, 30, 31 and 32, including fresh fruits.

The mark was subject to an invalidity action brought by a third party. As a result, the mark was invalidated for all goods, with the EUIPO Board of Appeal upholding the decision for “fresh fruits”. Chiquita appealed this decision to the General Court. 

The Decision

However, the General Court declined to overturn the Board of Appeal’s decision.

Chiquita disputed the Board of Appeal’s finding that the shape of the mark was “a slight variation of a basic geometric shape”, arguing that the mark instead consisted of “an ovaloid shape made up of three Bézier curves with very specific coordinates”. However, the General Court highlighted that the description of the shape was irrelevant. What mattered was that the shape did not contain any specific or characteristic element that the relevant public might perceive as distinctive. The overall impression was of “an oval with no easily and instantly memorable characteristics”.

It was also noted that oval labels were common in the sector of bananas and fresh fruit because of the fact that stickers of such shape could be applied easily to a curved surface. The relevant public would therefore place little relevance in the shape alone.

Furthermore, the blue and yellow colour scheme was one which the Court concluded was frequently used in the marketing of fresh fruits and could not, therefore, confer distinctive character on the mark.

Chiquita had attempted to rely on a market survey from 2020 which showed that the mark was memorised by consumers in Belgium, Germany, Italy, Sweden and the UK. However, the General Court dismissed this on the basis that the mark was registered some ten years earlier than the survey and, hence, the survey could not be relied upon to show that the mark had distinctive character as at the date of registration.

In relation to Chiquita’s second substantive ground of appeal, namely that the Board of Appeal had erred in finding that the mark had not acquired distinctive character through use, it was here that Chiquita fell foul of the strict and demanding requirements for proving acquired distinctiveness in relation to EU marks. As established by the CJEU in Société des Produits Nestlé and others v Mondelez UK Holdings and Services, if a mark is devoid of inherent distinctive character in all Member States, it can only be registered on the basis of acquired distinctive character if it is proven to have acquired distinctive character throughout the EU. That does not strictly require separate evidence for every individual Member State, but it does require the applicant to prove that any evidence supplied can be extrapolated to the whole of the EU.

In the present case, Chiquita had only provided survey evidence from four countries (Belgium, Germany, Italy and Sweden) and had failed to provide any evidence regarding why other Member States could be treated as one and the same market (e.g. because of geographical, cultural or linguistic proximity). The Court concluded that, given the nature of the fresh fruit market, distribution networks and commercial strategies were unlikely to be the same throughout the EU.

Chiquita’s evidence also showed use of the mark with other distinctive elements (e.g. the name CHIQUITA) and, therefore, such evidence was not sufficient to demonstrate that the mark was perceived as an indicator of origin, absent those elements.

Conclusion

While a disappointing outcome for Chiquita, noone could accuse the General Court’s decision of being surprising or ‘bananas’. There is a general reluctance to grant protection to shapes that could be perceived by the public as relatively simply geometric shapes.

The case also reinforces the established legal principle that proving acquired distinctiveness across the EU is a challenging and expensive process. Brand owners should be prepared to provide evidence of acquired distinctiveness from all Member States, if possible. Alternatively, they must be able to justify why evidence from a subset of Member States can apply to others, considering factors such as market similarities or the nature of their product.