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Gevers wins landmark EUIPO Appeal: FREEZE Trademark declared invalid
The EUIPO First Board of Appeal has declared the EU trademark FREEZE invalid for tobacco, vaping and related products, overturning an earlier decision of the Cancellation Division and confirming that descriptive terms cannot be monopolised through trademark registration.
Gevers represented Imperial Tobacco Limited in the invalidity proceedings based on absolute grounds against the EU trademark registration for FREEZE owned by Starbuzz Tobacco, Inc.
The case was handled by Andries Quataert, Senior IP Attorney, and Gythe Monette, IP Attorney, who argued that the term FREEZE was descriptive and lacked distinctive character for the goods concerned.
The dispute
The trademark FREEZE was registered for a range of Class 34 goods, including tobacco products, electronic cigarettes, hookahs, shisha products and related smoking accessories.
Imperial Tobacco sought to invalidate the registration on the basis that consumers would immediately understand FREEZE as referring to a cooling, refreshing or menthol-like flavour or sensation associated with tobacco and vaping products.
Although the EU IPO Cancellation Division initially rejected the invalidity action, Gevers successfully appealed the decision before the Board of Appeal.
The Board of Appeal’s findings
The Board agreed that FREEZE directly describes a characteristic of the products at issue. It found that consumers would immediately associate the term with a cooling, icy or refreshing sensory effect commonly linked to mint, menthol and similar flavourings used in tobacco and vaping products.
Moreover, the Board concluded based on the evidence before it, that there is no doubt that at the filing date the term FREEZE was used in the relevant market by numerous individuals and companies, including the EUTM proprietor itself (!), in a descriptive manner rather than as a trademark.
As a result, the Board concluded that FREEZE is:
- Descriptive under Article 7(1)(c) EUTMR; and
- Devoid of distinctive character under Article 7(1)(b) EUTMR.
The trademark was therefore declared invalid in its entirety for all goods in class 34.
Why this decision matters
This decision reinforces a fundamental principle of European trademark law. The terms that describe characteristics of goods must remain available for all market participants to use.
It also serves as an important reminder that even trademarks that have passed the registrability test of the EU IPO can remain vulnerable to invalidity actions where compelling evidence demonstrates that the sign should not have been granted protection at the date of filing.
For businesses operating in highly competitive sectors such as tobacco, vaping and consumer goods, the case highlights the importance of carefully assessing distinctiveness before filing a trademark application.
