Lidl bag a mixed result from the EUIPO

Lidl, the German discount supermarket chain, received a mixed bag of news last week from the European Union Intellectual Property Office (EUIPO).

In short, Lidl's attempts to revoke a trademark were successful but at the same time an opposition against Lidl's own trade mark was only partly dismissed.

In 2008, Lidl made an application to register the word 'Castello' as a trade mark at the EUIPO; the mark was applied to be registered against classes 29, 30 and 31 covering goods such as pasta and fresh fruit. The application was opposed however by Horno del Espinar, a Spanish company, who have their own trade marks for the word 'Castello' covering classes 35, 39 and a cross over class 30.

In considering Horno del Espinar's opposition, the EUIPO's Opposition Division requested it to submit evidence that it had renewed two of its marks, which was provided. The EUIPO failed, however, to forward this evidence on to Lidl. The Opposition Division upheld Horno del Espinar's opposition which prevented Lidl from registering its mark. Lidl appealed this decision but, again, the appeal was dismissed.

The matter was progressed to the EU General Court where it was subsequently decided that, as a result of the EUIPO's administrative error, the appeal board's decision was to be annulled. Meanwhile, the EUIPO's Cancellation Division considered the numerous revocation requests filed by Lidl in relation to Horno del Espinar's marks and, as a result of its failure to use its trade marks for the goods the marks were registered against, the Division revoked one of the Spanish company's marks.

On the same day, the Board of Appeal only partially rejected Horno del Espinar's opposition of Lidl's trade mark in respect of some of the classes it was registered against such as fresh fruit and pasta.

It is not often that the General Court lays the blame for inefficient proceedings at the door of the EUIPO, so we will keep an eye on this case to see how it progresses.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.