No protection for “POPS:” SKW Schwarz successful on behalf of basic in the trademark dispute against Kellogg

SKW Schwarz successfully represented basic AG Lebensmittelhandel in a trademark dispute with Kellogg Company (USA) about the terms “POPS” and “CORN POPS” for breakfast cereals. basic prevailed with its key argument that the term “POPS” was merely a descriptive term for “puffed cereal products” and therefore could not be monopolized by a trademark owner. “POPS” can therefore be freely used, including in combination with other wording such as wheat, spelt, or amaranth.

In May 2011, Kellogg had sued basic at Hamburg Regional Court for injunctive relief and damages for use of the terms “Dinkelpops” [“spelt pops”] on basic’s private label products and “amaranth pops” on third-party products sold by basic. Kellogg based the lawsuit on the two EU word marks “POPS” and “CORN POPS,” as well as on the German word mark “CORN POPS.” The Regional Court did not view likelihood of confusion and dismissed the claims in June 2013. Kellogg subsequently appealed the ruling.

In August 2011, basic, represented by SKW Schwarz, had already initiated cancellation proceedings at the European Union Intellectual Property Office (EUIPO) for lack of registrability of the two EU trademarks “POPS” and “CORN POPS.” In October 2013, the Office ordered the cancellation of the “POPS” trademark, but rejected the application for nullity of the “CORN POPS” trademark in December 2013. The respective losing parties appealed the decisions. In both cases, the Board of Appeal ruled in favor of basic: in July 2015 the EU trademark “POPS” was deleted in full and in November 2016, the “CORN POPS” trademark was cancelled for “flours and cereal preparations”. The decisions are final.

The German trademark “CORN POPS,” which was retained by Kellogg, remained in existence, though, since under German law, cancellation proceedings due to lack of distinctive character may no longer be carried out ten years after registration. A trademark owner may not invoke a trademark that is ready for cancellation, however.

Kellogg therefore withdrew its appeal before Hamburg Higher Regional Court in the end. The decisions of the Regional Court, which denied likelihood of confusion between the “POPS” or “CORN POPS” and “Dinkelpops” or “Amaranth-Pops” trademarks, are thus legally binding.

Irrespective of the lawsuit against basic, Kellogg had also issued warnings for trademark infringement against numerous mill owners and smaller cereal producers about use of the term “POPS.” They can now also refer to the decisions of the EUIPO or Hamburg Regional Court.

basic AG was advised by the following team from SKW Schwarz’s Munich office:
Dr. Dorothee Altenburg (Trademark), Hanna Maria Haensell (Trademark)

basic AG Lebensmittelhandel: Dr. Manuel Zalles (Head of Marketing)