Intercontinental Great Brands LLC is the owner of the cookie brand, and associated trade marks, OREO. It applied to register the below trade mark and following acceptance of its mark, was opposed by CorporativoInternacionalMexicano, S. De R.L. De C.V.
The opponent’s assertion was that a registration for such a mark would result in the applicant gaining a monopoly in a generic biscuit shape and surface decoration, with a view to preventing competitors from selling their own biscuits with a similar shape or decoration.
In pressing grounds under sections 41 and 59, the opponent made some ‘interesting’ arguments about the nature of the trade mark, including that the trade mark was, in fact, a functional shape trade mark that was not capable of distinguishing the applicant’s goods.
The applicant’s arguments centred on the inclusion of the word OREO as an essential feature of the trade mark, making the mark, not a mere representation of a biscuit, but a trade mark capable of functioning as such.
The applicant was also able to put on solid evidence, including packaging which features pictures of the trade mark (the biscuit). This was enough to allow the Hearing Officer to decide that the opponent has not established either of the grounds pressed and the opposition, therefore, failed.