Opposition fails: English word SNACK too descriptive

A Spanish company recently tried, by way of opposition, to block the application for the European word mark it’s snacking good.

It relied on its earlier SNACK’IN marks for snacks and related food products. On paper, that seems understandable: the same product category, the same snack-related field, and both signs contain an element referring to snack. Even so, the opposition was unsuccessful. The shared element of the marks had only limited distinctive character.

The refusal turned on the descriptive nature of the words used. The European Union Intellectual Property Office (EUIPO) found that, for the relevant public, snack directly refers to a light meal or something eaten between meals and is therefore descriptive of the goods and services concerned. Part of the public would also, without much effort, recognise that same descriptive element in the word snacking.

Because the word SNACK is descriptive, it carries only limited weight in the comparison of the marks. Since the remaining elements also differed from one another, the EUIPO found that there was insufficient similarity between the marks. The opposition was therefore rejected.

In itself, that is not a surprising decision. It is, however, somewhat stricter than the EUIPO’s previous approach to descriptive signs. A word is considered descriptive only if that is so for consumers throughout the entire European Union. In the case of an English word, this means that even consumers with only limited knowledge of English must understand its descriptive meaning. In cases of this kind, the EUIPO would often point to Spanish, Bulgarian or Romanian consumers with only a modest command of English. For them, an ordinary English word could still be distinctive. Quite a lot was therefore needed before a word would be considered descriptive, and only a small group of very basic words fell into that category.

Because the EUIPO has in turn struggled with the question of what qualifies as a generic and basic English word, it now also looks at the A1 and A2 lists of English vocabulary, which seek to rank language levels. If a word appears on the A1 or A2 list, there is a good chance that an opposition based solely on similarity to that word will fail. By way of comparison, the word snack is an A2 word. This introduces a little more objectivity into the assessment and has expanded the group of generic words.

The EUIPO is now waiting to see whether this approach and reasoning will be endorsed by the Court of Justice. Although somewhat arbitrary — why not B1 and B2 words as well, for example? — the greater predictability is, of course, helpful for trademark owners. One striking detail is that, last February, just before the snack opposition, the Court of Justice ruled on appeal that the English word “defend” is distinctive after all. Defend is also an A2 word.

Author: Arnaud Bos

Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.