Summerbird A/S challenges EUIPO decision on trade mark invalidity

6 Mar 2025Court Report

General Court dismisses Summerbird A/S's appeal against EUIPO's decision on the invalidity of the AMBER trade mark

Background and Parties Involved

The General Court of the European Union recently delivered a judgment in the case of Summerbird A/S versus the European Union Intellectual Property Office (EUIPO), concerning the validity of the trade mark 'AMBER'. The case was brought before the General Court following a decision by the First Board of Appeal of EUIPO, which declared the trade mark invalid for certain goods and services.

Initial Application and Dispute

The dispute originated when Puratos, the intervener in the case, filed an application for a declaration of invalidity of the EU trade mark registered by Summerbird A/S. The trade mark in question was for the word sign 'AMBER', covering goods and services in Classes 30 and 35 of the Nice Agreement, primarily related to chocolate and confectionery products.

Grounds for Invalidity

The application for invalidity was based on Article 59(1)(a) of Regulation (EU) 2017/1001, in conjunction with Article 7(1)(c) of the same regulation. The Board of Appeal found that the word 'AMBER' was descriptive of a type of chocolate, thus failing to meet the requirements for trade mark registration.

Summerbird's Appeal

Summerbird A/S contested the decision, arguing that the Board of Appeal had incorrectly assessed the descriptive nature of the mark. They claimed that the evidence used by the Board was dated after the filing date of the trade mark application and did not accurately reflect the public's perception at that time.

General Court's Decision

The General Court upheld the Board of Appeal's decision, agreeing that the word 'AMBER' was indeed descriptive of a type of chocolate known as caramelised white chocolate. The Court found that the evidence, including documents from chocolate makers and other sources, supported this conclusion.

Rejection of New Evidence

Summerbird A/S attempted to introduce new evidence, specifically a national patent document, to support their claim. However, the Court rejected this evidence as inadmissible, stating that its role is to review the legality of the Board of Appeal's decisions based on the evidence available at the time.

Implications for Trade Mark Law

This case highlights the importance of ensuring that trade marks are not descriptive of the goods or services they cover. The decision reinforces the principle that trade marks must serve to identify the commercial origin of products rather than describe their characteristics.

Costs and Conclusion

The General Court ordered Summerbird A/S to pay the costs of the proceedings, as they were unsuccessful in their appeal. This decision underscores the challenges faced by companies in protecting trade marks that may have descriptive elements.