Deceptive Trade Marks: When Branding Crosses the Line

Recent EU decision

 

The BoA decision concerning registration of the trade mark TUNA for food products and retail services highlights the significant risks of adopting a deceptive trade mark. Whilst this is an EU decision, its lessons can be applied generally.

 

In this case, the applicant sought to register the sign TUNA for everyday food products, including poultry, sausages, bread, pastries, ravioli, shellfish, and foodstuffs for animals, as well as retailing and wholesaling in relation to meat and fish. Presumably in an attempt to avoid a descriptiveness objection, the Applicant included the following restriction: “all the aforesaid goods other than in connection with tuna fish.”

 

The mark was initially registered but was later challenged by a competitor on the grounds that it was deceptive, as it misled consumers into believing that the food products contained tuna. The BoA upheld the decision of the Cancellation Division, which ruled that the mark was indeed deceptive and should be invalidated. The BoA reasoned that, since food products are sold to the general public, consumers would interpret the word TUNA in its plain meaning—i.e. as referring to the fish. As a result, there was a significant risk that consumers seeing the mark on the products packaging would mistakenly believe the goods and services contained or were related to tuna, despite the specification expressly excluding tuna fish.

 

The BoA further held that it was irrelevant whether the proprietor could use the mark in a way that avoided deception—for example, by placing the food products in clear packaging to show that they did not contain fish. The mere fact that the goods and services did not actually contain tuna was sufficient to render the mark deceptive. Additionally, the proprietor’s decision to include a limitation excluding tuna fish demonstrated an acknowledgment that there was a reasonable risk of consumer confusion. By doing so, the applicant effectively admitted that consumers could perceive the mark as having some connection to tuna. As a result, the mark created false information about the nature of the specified goods and services and was therefore invalidated.

 

Key takeaways

 

This case serves as an important lesson for trade mark owners and businesses. When applying for trade mark protection, it is crucial to ensure that the mark is not misleading in relation to the specified goods and services. Examiners and Courts will assess an application based on how it appears on paper, rather than how the mark is intended to be used in practice. Failing to consider this could lead to legal challenges, invalidation, and commercial setbacks.

 

To protect their brands and avoid the pitfalls of deceptive trade marks, trade mark owners should:

 

✔ Choose a trade mark that accurately represents goods and services without being misleading.

✔ Seek legal advice before adopting and filing a trade mark application.

✔ Assess the mark from the perspective of the average consumer.

✔ Stay informed about market trends and sector developments.

✔ Avoid relying on disclaimers or legal restrictions to circumvent descriptiveness objections.

 

The TUNA case serves as a clear warning—using a deceptive trade mark is a gamble that rarely pays off. Beyond legal battles, the real cost lies in the loss of credibility, consumer trust, and long-term brand value. In trade marks, honesty is not just the best policy—it is the foundation of a strong and sustainable brand.

 

Link

^[1] 24/05/2024, R 1651/2023‑5, TUNA