The Swiss food multinational wants to register the FITNESS brand in the EU.
McDonald's and Nestlé have won on Thursday two battles before the EU Court of Justice (CJEU) for the protection of their respective brands. McDonald's has prevented the registration of the McDreams Hotel brand by a German company claiming risk of confusion. For its part, the Swiss food multinational has managed to cancel a resolution that prevented it from registering the FITNESS line for various food products.
The case concerning McDonald's dates back to October 2015, when the German company McDreams Hotel applied to the EU Intellectual Property Office (EUIPO), based in Alicante, for registration as a community trademark for "commissioning services provision of temporary accommodation ".
The American fast food multinational formulated opposition to the registry alleging "risk of confusion" with several brands of "great notoriety" such as 'McDonald's', 'McMission', 'McInternet', 'McCompass', 'McFamily', 'McCafe', 'McWrap', 'Big Mac', 'McRib', 'McMuffin', 'McDouble', 'McBites', 'McCountry', 'McToast', 'McFish' and 'Mc'. The EUIPO initially rejected their arguments but ended up giving the reason and vetoed the registration of McDreams Hotel. The German company appealed to the CJEU.
In its ruling on Thursday, the General Court concludes that there is a risk of "improper use of the notoriety of the McDonald's brand." "Consumers could associate the brand of German society with the image of reliability, efficiency and low-cost services of American society, which would lead them to privilege the services provided by McDreams Hotel over those provided by its competitors," said the failure.
"McDreams Hotel would thus be obtaining an economic advantage that would consist in exploiting the effort made by McDonald's to consolidate the reputation and image of its brand, without the US company receiving any financial compensation in return," concludes the ruling.
The dispute involving Nestlé refers to the registration of the word sign FITNESS as an EU brand for food products such as milk and dairy products, eggs, fruits, protein preparations, cereals and foods based on rice or flour, water, juices Fruits, soft drinks, syrups and drinks preparations.
The trademark was registered in May 2005, but in September 2011 the Romanian corporation European Food asked the EUIPO to cancel it on the grounds that the term "fitness" had descriptive content. The Trademark Office rejected the appeal with the argument that evidence had been submitted out of time. But the CJEU forced him to correct the resolution.
In its final opinion, the EUIPO refused to register the FITNESS brand because the public perceives this term "not as an indication of the commercial origin of the products, but as a sign that highlights its qualities and beneficial characteristics for health." "Therefore, it is a word that must be left free so that Nestlé's competitors can legitimately use it in relation to other drinks and food consumed to obtain a good level of physical fitness," he argues.
Nestlé filed an appeal to the CJEU and European justice has proved it right. It annuls the contrary decision of the EUIPO for procedural reasons and asks you to review the case again.