Board of Appeal refuses to register name of small village as trademark for drinks

The Board of Appeal has upheld a decision of the Estonian Patent Office in which the latter had refused to register the trademark VERGI (Decision 1468-o, May 30 2014).

Estonian company Aldar Eesti OÜ applied to register the word mark VERGI (Application No M201001056) for “beer and non-alcoholic drinks” in Class 32 and “alcoholic drinks” in Class 33 of the Nice Classification.

The Patent Office refused to register the mark, stating that legal protection cannot be granted to a sign which designates the geographical origin of the goods under Article 9(1)(3) of the Estonian Trademark Act. Vergi is a coastal village in Estonia in Lääne-Viru County; there are other places in Lääne-Viru County, called Moe, Võhu and Unukse, where other entrepreneurs have produced and are producing drinks, especially alcoholic drinks. The office held that it was in the public interest to keep geographical names free for use by everybody to indicate and describe the goods. According to the office, the term ‘Vergi’ creates an association between the goods and a domestic source and may thus influence the purchase preferences of consumers, who may think that local producers are more trustworthy and that the goods are of a higher quality.   

The applicant filed an appeal against the office’s decision. The applicant drew attention to several court cases according to which signs or indications which may serve to designate the geographical origin of the categories of goods in relation to which registration of the mark is sought, especially geographical names, should remain available, not only because they may constitute an indication of the quality and other characteristics of the goods, but also because they may influence consumer tastes by, for instance, associating the goods with a place that may give rise to a favourable response.

The applicant was of the opinion that the office had not proven that Vergi was familiar among consumers, as it is a very small village with only around 93 residents. Therefore, the reputation of Vergi was insufficient and the geographical origin did not influence the preferences of consumers. The applicant stated that the office had interpreted the case law too vaguely as meaning that every place name may influence the preferences of consumers, and that the office should instead examine whether the place name Vergi reflected a quality of the goods in question among consumers. The applicant also pointed out that the trademark VERGI had been put to genuine use since 2003 and had acquired distinctive character.

The Board of Appeal did not satisfy the appeal. The board found that the word ‘Vergi’ had a meaning as a place name, but also as a certain area in Estonia where traditional agriculture is still active. Beer brewing and the production of alcoholic and non-alcoholic drinks are still present in that area and constitute a sustainable sphere of activity. The board stated that Vergi, as a geographical name, may create a positive association and expectations among consumers that goods marked with the VERGI trademark have been brewed or produced in Vergi or in some other place in Lääne-Viru County. The board also agreed with the office that the applicant had not proven that VERGI had acquired distinctive character through use.

Anneli Kapp, Käosaar & Co, Tartu