ALDI wins trademark battle against ALDO

An ALDI store...Image credit- RetailDetail EU

Aldo Store... Image Credit- The Gardens Mall

Facts…

·        In 2014, Aldi applied for the word mark ‘Aldi’ in a number of classes (3, 4, 7, 9, 16, 24, 28, 31, 34, 35, 36, 38, 39, 41, 42, and 43). In particular, class 35 which covers advertising, retailing including via the internet, and business administration in relation to many goods ranging from food to tobacco, to toiletries and household items.

·        Aldo filed an opposition against the class 35 registration relying on its earlier-registered Bulgarian figurative mark (47,361), filed in 2002, which features the word ‘Aldo’ within a blue and orange square. It further stated that its mark is intensively used in Bulgaria.

Developments…

·        In 2016, the European Union Intellectual Property Office’s (EUIPO) Opposition Division upheld the opposition in part in relation to the advertising and business services. However, the Opposition Division rejected Aldo’s opposition in relation to the retail services.

·        Aldi filed a notice of appeal, and the following year, the Fourth of Board Appeal annulled the decision and rejected Aldo’s opposition in its entirety. An appeal was filed to the General court.

·        The General Court today rejected an appeal by Bulgaria-based Aldo Supermarket, clearing the way for German supermarket chain Aldi to register its name as a trademark on the following basis;

Ø  Three different representations of Aldo’s mark had been filed at the EUIPO, but Aldo should have produced an official document demonstrating that the trademark is registered.

Ø  The mark relied on is a colour mark, and the PDF document showed a black and white copy, which should have been “identical in every respect to that certificate, including, of course, as regards the colours claimed by the earlier mark”.

Ø  Aldo’s submission of three different representations of the mark (one in black and white, and two in different colour combinations) “certainly do not satisfy the condition of accuracy and reliability” required in opposition proceedings.

·        The General Court dismissed Aldo’s appeal and ordered the Bulgarian chain to pay the costs of the EUIPO and Aldi.

News Source- World Intellectual Property Review