Written by Jim Dennis
Brand owners should take note following the cancellation of the CORN THINS trade mark by the EU Trade Marks Registry (EUIPO). The decision, by EUIPO’s Boards of Appeal, highlights the pitfalls of trying to protect a brand name that describes, or alludes to, the product it is promoting. In this case, EUIPO confirmed that “thins” is a known term for thinly sliced slices of food and is free to be used by anybody.
The ruling will leave a bitter taste for Real Foods Pty of Australia, the makers of Corn Thins (a packaged crispbread product originally from Australia), who ended up on the wrong end of a trademark invalidity action after trying to stop London health food producer Rude Health from using the phrase “corn thins” to sell its own range of crispbreads.
In 2011, after conducting brand clearance, Rude Health launched its range of crispbread “thins” products – namely Rice Thins, Oaty Thins, Multigrain Thins and Corn Thins. Soon afterwards, Rude Health was threatened with a Court action for trade mark infringement by Real Foods. The threat was on the basis of Real Foods’ EU trade mark registration in 2012 for CORN THINS for “crispbread slices predominantly of corn”.
Rude Health responded by applying pre-emptively to EUIPO to invalidate the CORN THINS trade mark registration. This was on the basis that CORN THINS describes “crispbread slices predominantly of corn”, cannot distinguish Real Foods’ products from those of another manufacturer and is therefore not registrable as a trade mark.
At first instance, the EUIPO disagreed with Rude Health, finding that “thins” derived from the verb “to thin” and CORN THINS was a play on words, actually meaning “corn that makes you thin”.
Rude Health appealed the decision. In response, Real Foods claimed that CORN THINS merely alluded to (but did not describe) the product, and submitted evidence of their long- standing use of the CORN THINS trade mark. They claimed that, even if it was descriptive, the trade mark had acquired distinctiveness and should therefore remain registered.
The EUIPO Fourth Board of Appeal has now delivered its decision, finding that the descriptive meaning of CORN THINS was immediately clear to consumers “without a moment’s hesitation”. EUIPO therefore ordered the cancellation of CORN THINS trade mark registration in the EU, meaning that, subject to any appeal to the European Court of Justice or common law rights, the CORN THINS mark is free to be used by anyone in the EU.
Rude Health was advised by Jim Dennis, our head of IP, Media and Technology. Jim commented as follows:
“The implications of this decision for brand owners are clear. First and foremost, if you want to protect your brand, don’t pick a brand that describes the product. The mere fact that a mark has been used in the EU for a period of time is not sufficient to show that the public perceives the mark as an indication of commercial origin.
“Unless a trade mark has a distinctive element it can be invalidated at any time, with potentially disastrous implications for the value and the future of the brand.
“Careful thought should always be given to ensuring a brand is distinctive enough, by, for example, adding visual design elements to it.
“Adding further goods and services to the trade mark specification that are not directly described by the trade mark can also save a mark from outright cancellation.
“Finally, if your brand is descriptive, think twice before threatening others with an EU trade mark infringement claim. You may end up on the wrong end of an invalidity action at OHIM and be unable even to issue your claim until that has been decided.”
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