Too simple to succeed? The Chiquita case and trademark distinctiveness in the EU

Meeting the requirements for trademark distinctiveness is vital for all types of trademarks in the EU but arguing that a mark is distinctive can be even harder in the case of non-traditional trademarks, such as colours and shapes. Volha Parfenchyk and Bart van Blokland share the lessons that can be learned from the recent Chiquita case when seeking to establish that a non-traditional trademark has acquired distinctiveness through use.  

A trademark is a sign whose primary function is to distinguish the goods and services of one undertaking from those of other undertakings. Therefore, this sign must possess distinctive character. 

While distinctiveness should generally be assessed for each mark individually, there are some categories of marks that are generally considered to lack such distinctiveness. Non-traditional marks, such as marks that rely on simple colours and shapes, are a good example.   

To demonstrate that such a mark is distinctive, the trademark owner can take a different legal path. Instead of demonstrating that a mark holds distinctive character in itself, the trademark owner can demonstrate that the mark has acquired distinctive character (or has become established) through use. To take this route, the trademark owner must provide evidence that the mark, because of its use on the market, is perceived by a significant part of the relevant public as originating from that specific undertaking and, therefore, is distinctive.   

The importance of evidence

Providing evidence of use is not only key to success when seeking to establish acquired distinctiveness but must also be done thoroughly and accurately.  

Firstly, not all types of evidence are considered convincing enough and the best forms of evidence are usually not readily available. Among the most convincing forms of evidence are surveys (questionnaires addressed to consumers that show how many of them recognise the mark and its origin) and market research (which shows the market share of the relevant mark and its market penetration). Unfortunately, trademark owners do not always have this evidence at their disposal and obtaining it can take time and money. Other forms of evidence that are readily available, such as figures on turnover and advertising expenditure, are also relevant but are usually not sufficient to demonstrate acquired distinctiveness of the mark.  

Secondly, for an EU trademark application, acquired distinctiveness must be proven throughout the EU. As established by Chocoladefabriken Lindt & Sprüngli v OHIM, this does not mean that the trademark must be proven for each individual member state, however. For example, if the trademark owner has provided evidence of trademark distinctiveness in one member state, they can also argue that this evidence is relevant for other member states; for instances, because of the common cultural or linguistic background. This allows the trademark owner to demonstrate distinctiveness throughout the EU.  

However, it is important to note that it is not sufficient to prove the trademark has acquired distinctiveness in only part of the EU. The importance of proof throughout the EU is reaffirmed in the ruling of the EU General Court in the recent Chiquita case.  

Background to the Chiquita case 

On 14 May 2020, Compagnie financière de participation sought a cancellation of the Chiquita figurative EU trademark (pictured right) in four different classes relating to fruit. This request was granted in its entirety by the Cancellation Division of the EU IP Office (EUIPO) in November 2021. Chiquita appealed to the EUIPO Board of Appeal, arguing that the mark was distinctive due to the combination of its oval shape and the colours yellow and blue. Chiquita also claimed that its mark had acquired distinctiveness within the EU and provided evidence that it had acquired distinctiveness in four different member states.  

On this basis, the Board of Appeal decided there were no good reasons to justify cancellation in three of the four classes but decided against the trademark registration in the fourth (fresh fruit) class, rejecting Chiquita's arguments and overturning the trademark registration.   

The General Court's judgement on the Chiquita case 

In its ruling in the Chiquita case, the General Court upheld the Board of Appeal's decision, which declared the figurative mark permanently invalid in one of the four classes. The mark was not considered sufficiently distinctive and acquired distinctiveness had not been sufficiently demonstrated on the basis that: 

• The Chiquita mark concerns a simple shape that does not involve any special addition, as this shape is more common with fresh fruit; 
• Furthermore, the oval shape has a technical function for curved fruit because it sticks better. 
• In line with the decision in Libertel, it held that the colour combination has little distinctive character, especially when it concerns primary colours such as yellow and blue. 

As the Court’s judgement reaffirms, figurative marks that are based solely on simple shapes and colours are not strong marks because they are not sufficiently distinctive.  

As a last resort, Chiquita's only option was to seek to prove that the mark had acquired distinctiveness. The company conducted market surveys in four different member states, pointed to the website that is available in several languages used within the EU, and provided notes on its marketing budget. However, these arguments were not successful. 

The General Court found (like the Board of Appeal) that the market surveys were too limited in scope, only concerned four member states and contained leading questions. The mark used on the website was different from the registered mark, as the website contained variants with the well-known 'Miss Chiquita' as part of the mark. Furthermore, the General Court also decided that the submitted marketing budget and sales figures did not sufficiently demonstrate that the mark had acquired distinctiveness, because it was not clear which areas it covered and which Chiquita brands were represented within these figures. Finally, noting that the evidence submitted generally only relates to a few member states, the General Court also found that Chiquita did not sufficiently explain how this evidence specifically applies to the EU market. 

Trademark distinctiveness and colour and shape marks 

The General Court’s conclusions in the Chiquita case are in line with previous case law from the EUIPO and the General Court, according to which simple shape and colour marks lack distinctive character. At first sight, this conclusion does not seem problematic when it comes to well-known marks. However, the difficulty of proving acquired distinctiveness should not be underestimated, even by the proprietors of well-known marks. Ultimately, the success of this legal path will depend on the evidence provided. 

For more information on establishing trademark distinctiveness, read our article on preparing evidence of use, speak to your Novagraaf attorney or contact us below.  

This article was written by Volha Parfenchyk and Bart van Blokland of Novagraaf's Knowledge Management department.