As a recent decision of the German Federal Patent Court shows, one of the popular naming practices for vegan and vegetarian products, namely the insertion of the letter "V" in the product name as an indication for "vegan" or "vegetarian", is likely to fail in Germany. While it may seem at a first glance that the EUIPO takes a less strict line, this appearance is likely to be deceptive.
Judgment of the German Federal Patent Court
In its Judgment of 10 December 2020 (case ref. 25 W (pat) 552/19) the German Federal Patent Court confirmed that the trademark “Vromage” for vegan cheese substitutes in classes 29 and 43 must be rejected, as the trademark lacks distinctiveness and may even be misleading.
The court reasoned that since at least 2012 it has become a standard practice to exchange the first letter of the German words for meat (“Fleisch”), fish (“Fisch”) and sausage (“Wurst”) with a “v” to indicate plant-based substitutes for these animal-based foods, i.e. “Visch”, “Vleisch” and “Vurst”. In German, the exchange of the letter “F” with the letter “V” does not change the pronunciation of the words.
Due to this standard naming practice, the word “Vromage”, as a portmanteau of “Vegan” and “Fromage” - the commonly-known French word for “cheese” even in Germany - would only be seen as an indication of its vegan nature. Therefore “Vromage” is simply a descriptive term for the goods in question.
Furthermore, the court found the term “Vromage” liable to deceive the relevant consumers as to the nature and quality of the goods. Since “Vromage” is only a recognizable modification of "fromage", (assuming it is reproduced in writing and if the French language is known), a relevant section of German consumers may not notice that the first letter of the word “Fromage” has been modified and thus assume they are confronted with regular cheese products (whereas the product is not a cheese in reality).
Practice of the EUIPO
While a cursory look at the EUIPO trademark registry might imply that the EUIPO is less strict towards such “vegan trademarks”, this conclusion would be misleading. Nonetheless, it does seem as if the EUIPO follows a more case-by-case assessment.
Even though there is a registered EUTM for “Vromage” (EUTM 14559413), in class 29 among others, this mark was not registered for cheese products.
The outcome for attempting to register the word mark “Vromage” for goods that had anything to do with cheese was in fact the same as in the judgment of the German Federal Patent Court: The Office found “vromage” to lack distinctiveness. However, the Office took a different road to arrive at this conclusion. It did not substantiate the lack of distinctiveness with a common naming convention for all vegan foodstuffs. Its decision was rather based on the fact that the Office found several instances of the word “vromage” being used as a generic term for a plant-based cheese substitute in the French media. Whether substituting the first letter with a “v” posed a common place naming practice for vegan goods in French was not examined by the Office. This could either be a sign that such a naming practice is simply (not yet) customary in French or that the Office is more inclined to base its assessment of distinctiveness only on a case-by-case basis.
In another case concerning a potentially “vegan trademark”, namely a cancellation action against the word mark “Visch&Vleisch” claiming protection for foods containing fish and meat, the Fifth Board of Appeal pointed out that a neologism only possesses distinctiveness when the sign differs perceptibly, either visually or aurally, from the original purely descriptive term, in this case “Fisch & Fleisch” meaning “Fish& Meat” in German (Decision of 26 January 2018, R 305/2017-5). Consequently, the word mark “Visch & Vleisch” lacked distinctiveness for meat and fish as well as foods made out of these ingredients. At the same time, the Board of Appeal also found that the cancellation Applicant provided insufficient proof that a significant proportion of German-speaking consumers associated the use of the letter “v” with vegan or vegetarian foodstuffs at the time of the trademark application in 2015. Would “Visch & Vleisch” not have been cancelled if it had been registered for meat and fish substitutes instead of “the real deal”? This outcome would obviously be at odds with the judgment of the Federal Patent Court which found that the naming convention of substituting the first letter with a “V” became prevalent in Germany since 2012.
We see that the Office has yet to expressly comment on the general distinctiveness of “vegan trademarks”. Therefore it remains an open question whether the Office considers the exchange of the first letter of usually animal-based foodstuffs with a “V” as an established labelling pattern for vegan products throughout the EU, with the effect that these marks would lack distinctiveness in general.
Given the word mark “Vurger” (EUTM 017931293) has been registered inter alia for „vegetarian burgers“ and „vegan burgers“ in class 29 as recently as 2019 might suggest otherwise.
Lastly, it seems that incorporating a non-distinctive term in a figurative sign could also be a viable means of at least securing some trademark protection, since the following figurative trademark, (EUTM 014613384) is registered in classes 29 and 43, inter alia for imitation cheeses:
Comment and Outlook
Even though a successful registration for designations of vegan substitute products where the letter "V" is used instead of the actual initial letter of the term for a normally animal-based food is anything but a no-brainer in the EU, meeting the following two conditions could go a long way:
- Sufficient phonetic and visual difference between the word creation for which trademark protection is sought and the “original” word, i.e. “Vurger” instead of “Burger”;
- The word creation has not yet reached the general vocabulary for this kind of product in the relevant linguistic practice.
As the judgment of the German Federal Patent Court shows, designations for vegan substitute foods featuring a “V” as an abbreviation for vegan cannot expect to receive trade mark protection in Germany unless a distinctive graphical element is added to the mark. Not too surprisingly, a cursory search for "vegan trademarks" in the German trade mark register only brings up the following sign, (DE 302017101896) registered, among other products, for “vegan food as a sausage substitute”:
It remains to be seen how the German Trademark Office will deal with the point raised by the Federal Patent Court regarding the misleading nature of “vegan trademarks”.
Authored by Mareike Hunfeld and Tetyana Kranker
