"Pet cuisine" descriptive for pet food?

The owner of the earlier EUTM for "The Pet CUISINE - alimento para mascotas felines - Genial" depicted above right opposed the EUTM application for the Pet Cuisine oval-shaped logo (above left) ("the Pet Cuisine logo"). Both marks were for foodstuffs for animals in Class 31.

The EU General Court confirmed the upholding of the opposition – and rejection of the Pet Cuisine logo application – by the EUIPO Opposition Division and Board of Appeal, and its decision can be easily summarised:

• The goods are identical.
• "Pet Cuisine" is the dominant element of both marks, in spite of that term having weak distinctiveness for those who understand those words.
• The marks are visually and phonetically similar for all relevant consumers, and also conceptually similar for those who understand the words "pet" and "cuisine".
• The relevant public will, on seeing "Pet Cuisine" on the same type of goods, believe that the marks derive from the same trade source.
• Therefore there is a likelihood of confusion between the marks.

The question which arises here is whether this is another case where an essentially descriptive mark has been given too much protection. Is it another case like the Alpine trade mark for skiwear? Put another way, would the word mark Pet Cuisine have been properly registrable for pet food and, if not, should a mark consisting of that term combined with other "decorative" elements be permitted to prevent a later mark for the same term but combined with other, different elements?

If the common term in the two marks had been "pet food", as opposed to "pet cuisine", then the correct conclusion would surely be that the first mark should not be permitted to block the later one. "Pet cuisine" is obviously not as purely descriptive as "pet food". However, is it still sufficiently descriptive to lead to the same conclusion? The correctness of the decision in this case is not clear-cut, but perhaps just about the right side of the line.

Case Ref: T-46/17Jason Rawkins