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  • ‘Potatoes, it cannot be denied, are vegetables’ – The General Court takes an EXXTRA DEEP look at what makes a crisp

    PepsiCo, Inc. v EUIPO (Intersnack Group GmbH & Co. KG) – T-82/17


    This General Court case featured an in-depth look at the classification of snack products, specifically crisps, in class 29.  Whilst the discussion in the General Court was very specific to the goods in question, there are some general points of interest that can be taken from this case.


    Intersnack had obtained an EU Trade Mark registration for the mark EXXTRA DEEP in classes 29, 30 and 31 on 3 February 2014 (EUTM Reg No. 012161981).  On 21 November 2014, PepsiCo filed for a declaration of invalidity against this registration on the basis that the trade mark was both devoid of distinctive character and descriptive.


    The invalidity application was initially granted for “extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks; Roasted, dried, salted, spiced, coated and processed nuts, cashew kernels, pistachios, almonds, peanuts, coconuts (dried)” in Class 29 and for “extruded and pelletised or otherwise manufactured or processed tapioca, manioc, rice, maize, wheat or other cereal products; Savoury biscuits and pretzels” in Class 30.  The Cancellation Division based this decision on the fact that all these goods could be crisps (or similar products) and the mark would be understood by the relevant public as a description of the ridge-cut shape of the crisps.  The Cancellation Division did not reach the same conclusion for “preserved, dried, and cooked fruits and vegetables” in class 29, which PepsiCo appealed.  The initial decision was upheld by the EUIPO Board of Appeal, and so PepsiCo appealed further to the General Court.


    The key question before the General Court was whether or not “preserved, dried and cooked vegetables” in class 29 covers “extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks” (one of the terms for which the invalidity application was upheld).  If the Court were to consider that it does, then it would be illogical not to reach the same conclusion for each term, namely that EXXTRA DEEP is descriptive and non-distinctive, on the basis that the one term is a sub-category of the other.


    There was a lot of discussion regarding the manufacturing process of crisps and the nature of the product, but the General Court concluded that “preserved, dried and cooked vegetables” did cover “extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks”.  The reasoning is summarised at paragraphs 54-57 of the decision:


    54      First, as is expressly indicated in the description of the goods in Class 29 covered by the contested mark, snack products (in particular crisps) are made from potatoes, which, it cannot be denied, are vegetables, as demonstrated in particular by the definition in the Oxford English Dictionary, produced by the applicant before EUIPO, according to which a vegetable is ‘any living organism that is not an animal; specifically one belonging to the plant kingdom’. That fact is not disputed by the intervener.

    55      Second, crisps can be made from vegetables other than potatoes, or from fruit, as the applicant points out.

    56      Third, there is nothing to prevent crisps made from vegetables or from fruit from being regarded as dried or cooked vegetables or fruits. As the applicant notes, crisps can be fried or dried or cooked.

    57      Fourth, as the applicant correctly states, fruit and vegetables in Class 29 are ‘preserved, dried and cooked’. They are not fresh fruit, which comes under Class 31. Crisps, or more broadly, ‘extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks’, are produced from preserved, dried or cooked vegetables and fruits.


    In addition to this factual reasoning, the Court also took into account previous decisions that stated that these terms overlapped.  This, whilst probably not determinative in this case, was the most interesting take-away from this case (from a general practice point of view).  Usually, when parties cite in their arguments previous cases that contradict the decision under appeal, the response from the EUIPO or General Court is something approximating to “we are not [necessarily] bound by previous decisions”.  The General Court in this case did not contradict this general position, as it explicitly stated that the Regulations are the only basis for assessing legality of decisions.  However, it did give previous decisions a lot of weight, which is an interesting (and positive) development.


    In my view, the two key points to take from this case are:


    1. If you feel you have good arguments but decisions are going against you, hope is not lost. Whilst still not particularly common, the General Court does overturn Board of Appeal decisions.  This isn’t news, but it is certainly encouraging to see it happen;

    1. Look for previous cases that contradict decisions that go against you. Whilst generally the EU bodies will say “we are not bound by previous decisions”, this case clearly shows that in some circumstances, previous decisions are given weight, and therefore they certainly can be helpful.