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Nestle loses again in EU over Koala mark

Written by Ellis Sweetenham on 13 July 2018

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Nestle haven’t have the best of luck when it comes to trade marks in the EU, and it seems the luck hasn’t yet changed as they are on the losing end of an appeal.

The matter started in 2007 when Lotte, a Japan-based confectionary company, filed an EU trade mark application for cartoon koala bear images and koala bear shaped confectionary, in class 30 which covers confectionary, cakes, biscuits and ice cream.

In 2008, Nestle opposed this application on the basis of its earlier 3D mark in class 30 for a box covered in koala cartoons.

On receipt of the opposition, the EU Intellectual Property Office requested Nestle provided evidence of genuine use of the mark, which it provided.

The opposition was therefore upheld.

However, that was not the end of the matter, as Lotte appealed to the Fourth Board of Appeal, who upheld the appeal in 2012 and therefore held that Nestle did not prove genuine use.

The General Court considered the case in 2015, and annulled the appeal decision, stating that Nestle had indeed proven genuine use.

In 2016, Lotte appealed the matter again, but this time to the Court of Justice for the European Union. However, the Court rejected the appeal.

The case then reverted back to the Fifth Board of Appeal at the EU Intellectual Property Office, who sided with Nestle and allowed the opposition.

Lotte then argued the case back the General Court stating that Nestle had not shown genuine use as the invoices provided did not show the mark was in use or marketed at the time.

The General Court put its foot down with this matter and states that Nestle had not shown genuine use and did not sufficiently prove the mark was being used. Therefore, the decision in favour of the opposition is to be set aside.

It seems this matter is finally over with a massive amount of back and forth over 11 years, but who knows what is round the corner- watch this space.

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