German soft drinks maker Eckes Granini, home of brands JOKER, HOHES C and YO “Fruit Syrup” is fighting Tesco’s bid to register “YOO” as a trade mark for a range of yoghurts. The German company’s YO registration is in the same class as Tesco’s application but will this be enough for a successful opposition? Jonathan Mayner says Hi (or Yo) and reports.
Who: Tesco / Eckes-Granini
When: April 2011
Law stated as at: 31 May 2011
German soft drinks manufacturer Eckes-Granini has lodged formal opposition proceedings with the UK Intellectual Property Office ("IPO") against an application by Tesco Stores Limited ("Tesco") for registration of Tesco's "Yoo" mark, which the retailer uses in relation to an own-brand yoghurt range
Eckes-Granini is the registered proprietor of various European Community Trade Mark's ("CTMs") for "Yo" which it uses in relation to its range of fruit squash drinks. It has been reported that Tesco had until 17 May 2011 to file a defence to Eckes-Granini’s opposition submissions. Neither company has commented on the dispute, and since an initial flurry of publicity about the dispute in April of this year little information has been released about the nature and status of the dispute. So what exactly could be the basis for this dispute and what legal issues might the companies be thinking about as this develops?
Trade Mark Applications
Both companies will be aware that a registered trademark entitles its proprietor to prevent other businesses from using an identical or similar mark in relation to the sale or provision of identical or similar goods or services.
In the UK applications for registration of trade marks are governed by the Trade Marks Act 1994 (the “Act”). Broadly speaking applications can be for words, symbols or a combination of both (although in certain circumstances applications to register sounds and even smells will be entertained) and will set out the goods and services for which trade mark protection is sought. These goods and services are grouped together into classes for ease of reference.
As well as setting out the grounds on which trade mark proprietors can enforce their trade mark rights in the UK courts, the Act also provides for proprietors of other trade marks to object to an application for registration of a trade mark which could infringe their own earlier trade mark, as in the present case. These opposition proceedings are carried out (in the first instance at least) via the IPO rather than the courts and the earlier trade mark rights that can be relied upon in such proceedings include unregistered trade marks and registered trade marks, including CTMs which provide protection in the UK as well as in other member states of the European Union.
"Yo" registrations and "Yoo" application
Eckes-Granini have a range of registered word and logo CTMs relating to their “Yo” brand, dating back to 2001 and covering a range of goods and services in various classes, although most crucially for the present case in class 29 for various foodstuffs including “”jellies, jams, fruit sauces (compotes) ; eggs, milk and milk products; edible oils and fats”.
Tesco’s application for the UK registration of the “Yoo” trade mark is for the word “Yoo” in class 29 for the following goods:
“Dried, preserved and/or cooked fruits and vegetables; fruit sources [sic]; jams; fruit purees; edible oils and edible creams; jellies; soups; milk; powdered milk; flavoured jelly milk and butter milk; milk and dairy products; desserts; yogurt [sic]; drinking yoghurt; mousses; creams; beverages made mainly from milk and milk products; beverages made from milk ferments; milk beverages containing fruit; fermented natural or flavoured milk products”.
Eckes-Granini will no doubt be relying on their CTM registrations in class 29 along with whatever unregistered rights they may have in the "Yo" mark as might assist their case.
While the goods covered by the "Yo" registrations are not entirely identical to those in Tesco’s “Yoo” application, there is a clear overlap around jams, milk products and the like. Notably Eckes-Granini’s registration does not expressly state either “diary products” broadly nor “yoghurt” specifically as goods protected by their marks, so there may be some semantic arguments to be had around whether or not the "milk products" referred to in the "Yo" registrations are intended to cover yoghurt products, and not merely milk-based drinks. That said, the clear overlaps in relation to jams, fruit sauces and compotes will more directly affect Tesco's plans for any products in the "Yoo" range which comprise of split pots which include fruit compote alongside the yoghurt.
Likelihood of confusion
As Tesco’s “Yoo” mark is not identical to Eckes-Granini’s “Yo” mark, in order to successfully oppose Tesco’s application Eckes-Granini will need to show that because the “Yoo” mark is similar to the earlier “Yo” mark and is to be registered for overlapping or similar goods there is a likelihood of confusion on the part of the public in relation to goods sold under the “Yoo” mark. Such confusion could arise if for example the buying public mistakenly believes that goods (such as yoghurt or yoghurt drinks) sold under the “Yoo” mark are in fact produced or endorsed by or associated with the manufacturer of the “Yo” soft drinks range (section 5(2)(b) of the Act).
Detriment to distinctive character
Alternatively, Eckes-Granini may seek to rely on section 5(3)(a) of the Act which provides that an application for a trade mark may be refused if it is identical or similar to an earlier trade mark which has a reputation in the UK or European Union, and use of the new trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or to the repute of the earlier trade mark.
As such the success or otherwise of Eckes-Grainini’s opposition will likely rest on an analysis of whether or not the goods covered by Tesco’s “Yoo” application are sufficiently similar to those covered by the “Yo” registrations, an assessment of whether or not there is in fact a likelihood of confusion on the part of the buying public and some consideration of whether the use by Tesco of the "Yoo" mark will dilute or otherwise adversely impact the distinctiveness of Eckes-Granini's "Yo" brand.
In reality we may never know the intricacies of this case because, as with many such opposition proceedings, there will be a good chance that the parties will arrive at a settlement. Such a settlement may involve an alteration of Tesco’s application to remove references to those goods for which Eckes-Granini has protection by virtue of its earlier trade marks or a confidential co-existence agreement setting out how and in relation to what goods each party may use their similar marks.
Such an agreement would likely allow Tesco to continue to use the "Yoo" mark in relation to yoghurts, and Eckes-Granini to use the "Yo" mark in relation their soft drinks ranges while preventing both from directly competing with one another by producing the same products under the similar marks. That is unless of course Eckes-Granini has its sights set on the yoghurt market and / or Tesco has plans to expand the “Yoo” range into the soft drinks market, in either of which cases the companies may well pursue this dispute aggressively, although this seems unlikely given the goods covered by their respective trade mark application and registrations.
Why this matters:
This case is a reminder to all brand owners that care must be taken when establishing a new brand to ensure that all likely sources of opposition to the registration of any relevant trade marks are identified and strategies put in place for addressing any opposition which arises. It would be surprising indeed if Tesco was not aware that a challenge was likely in this case, given the similarity of the mark and some of the goods covered. That said, as long as the parties’ commercial plans for their brands are not unduly affected and provided that they negotiate in good faith and try to arrive at a fair and balanced compromise that protects the actual goods that they wish to produce under their trade marks, there is no reason that this or similar cases should become prolonged or expensive legal battles.