Biolatte – a distinctive mark or just milking it?

This case concerns an appeal against the decision of the EUIPO Board of Appeal (Case R 351/2017-1) by Biolatte Oy, a Finnish company specialising in probiotic products, which sought to register the mark Biolatte in relation to dietary supplements.

The application was refused on the grounds that the mark is descriptive and devoid of distinctive character and this decision has been upheld at the General Court.

Background

On 17 August 2016, Biolatte Oy filed an EU Trade Mark Application No. 015759319 for Biolatte in relation to "dietary supplements; dietary supplements for humans; enzyme dietary supplements; probiotic supplements; digestive enzymes; dietary supplements for animals; food for babies" in class 5.

The Examiner provisionally refused the application in its entirety on the basis that the mark was descriptive and lacked distinctive character.

In its appeal against this decision, Biolatte Oy argued that:

• The mark is a lexical invention, combining part of the word probiotic with part of the name of the founder, Yves Delatte.
• The mark is distinctive in relation to dietary supplements which are not similar to organic milk products.
• The mark is not intended to be used in relation to food, beverages or other foodstuffs.
• The applicant removed "food for babies" from its specification in order to make clear that the mark is only to be used in relation to dietary supplements.
• The mark is already in use in Belgium, Estonia, Spain, France, Latvia, Lithuania, Luxembourg, Finland and the UK and has achieved a recognised status in the EU.

Nevertheless, the Examiner maintained his objection, finding that:

• Biolatte, in Italian, is descriptive of organic milk or another lactic ingredient which are obvious examples of dietary supplements.
• Combining the words 'bio' and 'latte' into one word did not give the mark distinctive character.
• Organic milk is known for its health benefits (eg higher levels of vitamins and proteins, and therefore the mark is informative and descriptive of dietary supplements).
• The relevant consumer in this case is the Italian-speaking consumer. No evidence was submitted to show that the mark has achieved acquired distinctiveness in an Italian-speaking country of the EU.

Undeterred by this decision and determined to achieve registered protection for its mark, Biolatte Oy appealed this decision to the EUIPO Board of Appeal, arguing that:

• The mark is a lexical invention.
• Italian-speaking consumers would not interpret the word 'Biolatte' as meaning 'organic milk' and would instead phrase this as 'latte organico'.
• Even if the Italian-speaking consumer would perceive 'Biolatte' as meaning 'organic milk', it would still be distinctive in relation to dietary supplements, which consumers do not associate with milk.
• The mark has 'achieved a distinctive and trade mark-like character' in the light of the use made of it throughout the EU since 2003.

In spite of these arguments, the Board of Appeal did not overturn the refusal. It held that:

• The mark is devoid of distinctive character.
• The Italian-speaking consumer will not recognise the mark as referring to Yves Delatte nor will it recognise the mark as having acquired distinctiveness through use as no use has been made of the mark in Italy.
• The Italian-speaking consumer will perceive the mark as informing them of the contents of the dietary supplements rather than their commercial origin.
• 'Bio' is an adjective that is recognised as meaning 'good for health' and 'latte' means milk. It also bears the same lexical root as 'acido lattico' ie lactic acid.
• The applicant admitted that dietary supplements can contain lactic acid bacteria (indeed, its own products do) and so the mark lacks distinctive character in relation to these goods.
• "Consumers who see the mark used in relation to supplements will not be led to think that these are in the form of beverages or milk but that they contain lactic acid".

The findings of the General Court

The General Court agreed with the EUIPO Examiner and the EUIPO Board of Appeal, holding that the mark is indeed devoid of distinctive character, even in spite of the error in law made by the Board of Appeal when it assessed distinctive character not in relation to the goods specified, but in relation to those which were actually marketed by the applicant. It found that:

• 'Bio' is a descriptive, diminutive adjective meaning 'biological' or 'organic' and 'latte' is the Italian word for 'milk'.
• The mark does not syntactically juxtapose the words in an unusual way to give the mark distinctive character.
• The Italian-speaking consumer would perceive the mark as conveying information concerning the content of the goods (ie products containing lactic acid).
• The mark has not acquired distinctiveness through use among Italian-speaking consumers as the evidence provided contained exhibits in English, Lithuanian and Finnish.

Key takeaway

This case serves as a useful reminder that applicants should consider the meanings of their mark in the languages of all EU Member States before seeking registration.

While 'Biolatte' would not necessarily strike the average UK consumer as being descriptive or non-distinctive in relation to dietary supplements, the General Court has held that the average Italian consumer would clearly think otherwise.

Case Ref: T-229/18