Background
In 2017 an Italian winery, Cantina Sociale Tollo SPA (‘Cantina Tollo’), secured an EU trademark (EUTM) registration for ALDIANO covering “alcoholic beverages (excluding beers)” in Class 33. This was later challenged by Aldi Einkauf SE & Co OHG, the German supermarket chain, which sought a declaration of invalidity of the ALDIANO mark.
Aldi relied on a number of its earlier EUTMs and international registrations for the word mark ALDI, citing two earlier marks covering broadly stated “retail services” in Class 35 (including EUTM No 3360955), and also the earlier EUTM ALDI (No2019867) covering identical goods in Class 33. Cantina Tollo, by way of a counter-attack, placed Aldi on proof of genuine use of its claimed earlier rights.
In April 2020 the Cancellation Division of the EUIPO upheld Aldi’s invalidity challenge, finding that genuine use of Aldi’s earlier EUTM No 3360955 had been duly established for “retailing of foodstuffs including alcoholic and non-alcoholic beverages” in Class 35. The Cancellation Division concluded that there was a likelihood of confusion between ALDI and ALDIANO. At that time, the Cancellation Division chose not to examine Aldi’s invalidity claim based on its earlier mark No 2019867, having already established the earlier rights claimed by the other marks.
Cantina Tollo appealed against the decision of the Cancellation Division. The Board of Appeal upheld the appeal, annulled the decision of the Cancellation Division and dismissed the invalidity claim. It considered that the evidence submitted by Aldi did not establish genuine use of the earlier marks, noting that Aldi claimed protection for retail services by using general wording -“retailing in all product areas” and “running supermarkets and discount retail outlets” - without providing specific details of the goods or types of goods to which those services related. The board therefore held that it was for “that very broad specification that [Aldi] had to prove genuine use of the earlier marks and the earlier registration, which was impossible”. It also found that the evidence submitted by Aldi did not establish either the nature nor the extent of use of the ALDI Mark for “beers” in Class 3 2and “wines” in Class 33 for EUTM No 2019867.
Aldi appealed to the General Court, seeking an annulment of the board’s decision. Aldi contended that the board had erred in law in finding that there was no proof of genuine use of:
1. the earlier mark No 3360955 and the earlier international registration for the services in Class 35;
2. the earlier mark No 2019867 for “wines” in Class 33; and
3. the earlier mark No 2019867 for “beers” in Class 32.
Decision
In Aldi Einkauf v EUIPO (Case T-429/21), the General Court overturned the Board of Appeal’s decision, allowing Aldi’s appeal. Significantly, since one of the earlier marks relied on by Aldi was registered before the date of delivery of the judgment of 7 July 2005 Praktiker Bau- und Heimwerkermärkte (Case C‑418/02), it was not subject to the obligation arising from that judgment. In short, the court’s decision may have been different had Aldi’s earlier rights been fi led after the Praktiker decision (which essentially clarified the effects of trademarks registered for “retail services” without further specifications in Class 35).
The court held that the board had erred in finding that Aldi had to prove genuine use “for the very broad specification of retail trade in all product areas”. The court also considered that the board had, in fact, made several errors as regards the assessment of the evidential value of some items of evidence submitted by Aldi.
In interpreting the concept of ‘genuine use’, the court considered that account must be taken of the fact that the rationale for the requirement that the earlier mark must have been put to genuine use is not to assess the commercial success of an undertaking or to monitor its economic strategy or, moreover, to reserve the protection of trademarks for large-scale commercial undertakings.
Guidance was also given in relation to the factors involved in the assessment of what constitutes genuine use. The court highlighted the need to establish whether the commercial exploitation of the mark is real (does it maintain or create market share?), the nature and characteristics of the goods or services covered, the characteristics of the market and the scale and frequency of use of the mark. The court also confirmed that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine. Even minimal use can therefore qualify as genuine.
Comment
Aldi will be delighted with this decision as it can now push the EUIPO to remove the ALDIANO mark from the EUTM register.
This article first appeared in WTR Daily, part of World Trademark Review, in November 2022. For further information, please go to www.worldtrademarkreview.com.
