Change in practice concerning registration of geographical names

Can a geographical name be registered as a trademark in the European Union? While OHIM and southern European countries would answer ‘yes’, several countries in northern Europe are of a different opinion. Their core argument is that geographical names shall remain available for use by everybody to designate the origin of goods or services.

In this regard, it should be noted that, already in 1998, Advocate General Cosmas had described these different approaches in his opinion on Windsurfing Chiemsee (Paragraph 49), concluding:

“Although the national court and the defendants believe there is a 'need for the geographical indication to remain available to everybody' in the sense described above, that belief is misconceived and inconsistent with the [Trademarks Directive (89/104/EEC)].”  

The European Court of Justice (ECJ) followed his opinion, ruling that the directive merely guarantees the right of third parties to use a geographical name descriptively, that is to say, as an indication of geographical origin, provided that it is used in accordance with honest practices (Windsurfing Chiemsee, Paragraph 28).

According to the ECJ, the directive prohibits only the registration of geographical names which designate places which are currently associated with the category of goods in question or which may be liable to be used in the future as an indication of the geographical origin of that category of goods.

Nevertheless, the different interpretations in the European Union are a concern for applicants. The Estonian Patent Office routinely refused geographical names without assessing in depth whether they are, in the mind of the relevant public, associated with the goods, or whether it is reasonable to assume that such a name is capable of designating the geographical origin of that category of goods in the future.

Recently, the Harju County Court overturned (in Case 2-14-56620) the decisions of the Appeal Board and the Patent Office refusing to register the trademark VERGI for alcoholic and non-alcoholic beverages. Vergi is a small historical fishing village in northern Estonia. According to the Patent Office:

• the name Vergi was known to the relevant public;
• it was theoretically possible to produce beverages in Vergi; and
• there already were some beverage production companies in the same and neighbouring counties.

Therefore, the relevant public could believe that the goods originated from Vergi or were related to Vergi in other ways.

The Harju County Court rejected this argumentation and followed the guidance given by the ECJ in Windsurfing Chiemsee. According to the court, the mere possibility - from an agricultural and historical point of view - that the relevant goods could be produced in the village of Vergi did not allow the conclusion that the relevant public would associate Vergi with beverages or that it was reasonable to assume that it may happen in the future. The overwhelming majority of Estonia's territory is suitable for the production of beverages, including the cultivation of raw materials, and many places have historical ties to the production of alcohol, especially in the coastal areas. The court found that the connection between the place and the goods must be specific and must result from the reputation of the place, which is perceived by the relevant public clearly and distinctively.  

Following the decision, the Estonian Patent Office has accepted to register the names of some smaller villages, but is still reluctant to register geographical names designating larger cities or areas.

Ingrid Matsina, AAA Legal Services, Tallinn