Brexit Determines Appeal Following Lax Max Opposition

In the recent Board of Appeal decision Max Kiene GmbH v Frito-Lay Trading Co GmbH R 204/2020-4 delays during the opposition period have subsequently resulted in the appeal against the successful opposition being allowed due to intervening changes in the legislative landscape brought about by Brexit.

In July 2010 Max Kiene filed their application for a device mark consisting of the word MAX inside two concentric circles (as shown here) for various food items in classes 29, 30, 31. The mark was accepted in September 2010, and by December 2010 had been opposed by 4 different parties, although one of the opponents withdrew shortly thereafter.

One of the opponents was Frito-Lay, who have the prior UK registration of MAX for potato crisps in class 29 and crisps of potato flour in class 30 and the prior EU registration for WALKERS MAX for various chip or crisp type products in classes 29 and 30. The opposition was suspended in January 2013 and only resumed in January 2017 – presumably spurred on by the ‘Yes’ vote in the Brexit referendum. However, even after that long suspension it was still subject to numerous extension of time requests.

The EUIPO Opposition Division gave their opinion in late November 2019, in which they upheld Frito-Lay’s opposition. Max Kiene had required Frito-Lay to demonstrate evidence of use of its UK registration. While the evidence showed the word MAX used in conjunction with the word WALKERS, the Opposition Division accepted that it counted as use of MAX alone given that that mark had a much larger font size and that it is common practice for autonomous marks to be shown together with different stylisation. The goods of the contested application were found to be identical in-part, similar to a low degree in-part and dissimilar in-part to the goods for the UK registration. While the word MAX has descriptive connotations it could not be held to have no distinctiveness as its registration was not challenged, and so the Opposition Division held that it has at least a very low level of distinctiveness. However, given the finding that the application is phonetically and conceptually identical and visually similar to an average degree with the UK registration, the Opposition Division held that there would be a likelihood of confusion for the goods that are identical or similar. There was considered to be no likelihood of confusion with the WALKERS MAX mark as the first element is the more distinctive and prominent feature of that mark.

Max Kiene appealed to the Board of Appeal, who in their decision dated 11th January 2021 held that the UK registration is no longer relevant for opposition purposes, given that the transitional provisions to the withdrawal of the UK from the EU ended at the close of 31st December 2020. In order to be taken into account an earlier right has to have protection in the EU on the date of the decision. The Board of Appeal also essentially upheld the finding of no likelihood of confusion with the WALKERS MAX mark.

While arguably against the odds Max Kiene has been successful against Frito-Lay’s opposition, the oppositions by the other two opponents are on-going.

Author: Quinn Miller

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