That’s the way the cookie crumbles: O2 fails to revoke 3D trade mark

The mobile network provider, O2, has failed in their attempt to prevent namesake 3D marks from remaining valid as EU trade marks.

In 2014, O2 filed an application to render two 3D EU trade marks owned by Galletas Gullón as invalid claiming they had not been put to genuine use for a continuous period of 5 years.

The marks in question were registered in 2004 and 2009 and cover bags for biscuits and the packaging for biscuits, which include the term ‘mini O2’.

O2 were claiming that the marks used by Galletas Gullón differed to those registered and therefore altered the distinctive character. They were therefore arguing that Galletas Gullón were not using their registered trade marks.

The EU Intellectual Property Office Cancellation Division was first to consider O2’s application and reject their attempt to revoke the marks in June 2015.

This decision was appealed by O2 to the Fourth Board of Appeal who disagreed with the Cancellation Division and ruled in favour of O2 rendering the marks used by Galletas Gullón different to those registered as dominant elements were changed. It therefore, held there had not been continuous use for 5 years and revoked Galletas Gullón’s rights as of July 2014.

Galletas Gullón appealed against this arguing the Board was wrong to deem there had not been genuine use.

This appeal was heard by the General Court who handed down their judgment on 23rd October 2017. The General Court flipped the decision back in favour of Galletas Gullón and held the minor changes to the brand were not enough to alter the distinctive character of the registered marks and therefore, there was genuine use of 5 years.

Galletas Gullón’s rights were re-instated and the EU Intellectual Property Office and O2 were ordered to pay the costs of the case.

Yet another attempt to deem a 3D trade mark as invalid, however, this one took the biscuit and failed.

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