In 2015, Gellatas Gullón, a Spanish company involved in the production of confectionery, among other things, applied to the European Union Intellectual Property Office (EUIPO) to register a trademark for two black biscuits containing various designs, with white cream in between. The biscuits, named Twins by the Spanish company, were presented against a blue background.
The description itself suggests that the trademark in question is, at first glance, similar to the popular OREO biscuits. The reaction from the manufacturer of these iconic sweets was not long in coming. Intercontinental Great Brands LLC filed an opposition with EUIPO against the registration of the trademark in question. The main arguments raised were that the company had registered two trademarks depicting OREO earlier than the Spanish company, one of which covered the biscuit itself as a three-dimensional trademark, while the other was a classic word and figurative trademark. Therefore, in the opinion of the American company, the registration of the trademark in question may lead to a high probability of confusion between the biscuits of both manufacturers among potential consumers.
The EUIPO supported the position of Intercontinental Great Brands LLC by upholding the opposition. As a result of the appeal filed by the Spanish company, the case was transferred to the next instance, namely the Court of Justice of the European Union, which was to ultimately resolve the dispute.
The appeal stated, among other things, that the trademarks of the competing companies differ sufficiently to be eligible for protection. The main argument was that the trademark in question covers the entire package, which, in addition to the appearance of the cookies, also includes a large name “Twins” written in white font and the company name placed on a green background. Another argument in favor of the validity of the opposition was that no manufacturer can claim protection for the appearance of the cookie itself, and therefore cookies consisting of two black biscuits with white cream in between, due to the lack of distinctive character, cannot be subject to legal protection. According to Gellatas Gullón, what distinguishes the OREO trademarks is the name of the cookie that is visible on them, and it is this word element that constitutes the characteristic feature of these marks.
In the case, the court did not support the position of the Spanish company and, at the end of May 2020, ruled in favor of the American manufacturer. The justification included, among other things, the fact that even in the case of word and figurative trademarks, the graphic element plays as important a role as the verbal element, which becomes even more significant in a situation where the potential consumer perceives a given brand as a whole. This is also the case with OREO cookies, where, in addition to the name itself, their appearance was a key element. As a result, by conducting a comprehensive assessment, without focusing solely on the appearance of the products, the Court of the European Union indicated that the average consumer will first perceive the shape and appearance of the cookies, and only then their manufacturer, and not the other way around, as suggested by the company Gellatas Gullón. Therefore, the appearance of two black biscuits with white cream undoubtedly evokes the image of OREO cookies.
Will this be the end of the OREO case? We will certainly find out soon. Regardless of this, it is worth remembering that a similar case took place in the past regarding KitKat bars. At that time, the Court of Justice of the European Union ruled that the shape and appearance of these bars were not unique enough to be protected.
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