CTM refused due to lack of distinctive character in Catalan

In Sogepi Consulting y Publicidad SL v Office for Harmonisation in the Internal market (OHIM) (Case T-72/11, September 13 2012), the General Court has confirmed OHIM’s refusal to register the word mark ESPETEC as a Community trademark.

On July 31 2008 Sogepi Consulting y Publicidad SL applied for the registration of a Community trademark consisting of the word ‘espetec’ to distinguish “raw and dried pork meat sausages” in Class 29 of the Nice Classification.

The application was refused on January 8 2010 on the basis of the provisions of Articles 7(1)(b) and (c) and 7(2) of the Community Trademark Regulation (207/2009); the OHIM examiner considered that the term ‘espetec’ was descriptive of the goods and devoid of distinctiveness.

By writ of March 5 2010, Sogepi filed an appeal against the decision. The Second Board of Appeal of OHIM dismissed the appeal by decision of November 12 2010, holding that:

• the term ‘espetec’ means ‘salami’ in Catalan (ie, a long narrow sausage that is typical of Catalonia) and, therefore, in accordance with the provisions of Article 7(1)(b) and (c) of the regulation, it is descriptive and devoid of distinctiveness for the products at issue; and
• the mark applied for had not acquired distinctiveness through use and, therefore, it could not be registered under Article 7(3) of the regulation.

Sogepi appealed to the General Court, alleging infringement of the aforementioned provisions of the regulation. In particular, Sogepi claimed as follows:

• Although the original etymological meaning of the term ‘espetec’ is descriptive, according to a dictionary consulted by Sogepi, it has four other meanings. Moreover, the term ‘espetec’ did not appear in this Catalan dictionary as a synonym of ‘salami’.
• Catalan is not an official language of a member state of the European Union. Relying on the judgment of the Court of Justice of the European Union in Storck v OHIM (Case C-25/05 P), Sogepi argued that a word mark can be refused as being descriptive only if it has a meaning in one of the official languages of the European Union.
• Since the term ‘espetec’ does not mean anything in Spanish, the official language of the member state at issue, OHIM could not validly conclude, by referring only to a Catalan dictionary, that the mark applied for was descriptive.
• OHIM had wrongly applied Article 7(3) of the regulation, under which a descriptive mark can be registered if it has acquired distinctive character through use in relation to the goods that it designates. In order to prove acquired distinctiveness for the purposes of Article 7(3), evidence of the isolated use of the mark in question could not be required, as OHIM had done.

The General Court first noted that registration of a word mark must be refused, under the provisions of Article 7(1)(c) of the regulation, if at least one of its possible meanings designates a characteristic of the goods or services concerned. As Sogepi itself had recognised, the term ‘espetec’ was part of the Catalan language before the product was introduced into the market.

The General Court further noted that, under Storck v OHIM, the ‘part of the European Union’ referred to in Article 7(2) of the regulation may comprise, where appropriate, a single member state. However, that judgment did not imply that a ‘part of the European Union’ cannot correspond to a territory smaller than that of a member state. The objective of Article 7(2) is to prevent the registration of a mark due to the existence of a ground of refusal in one part of the European Union, which may be part of one or several member states.

The General Court also held that OHIM’s conclusion as to the descriptive character of the term ‘espetec’ was based not only on a Catalan dictionary, but also on:

• the judgment of the Spanish Supreme Court of November 12 1993, which confirmed the nullity of the Spanish mark ESPETEC on the grounds that it designated a kind of Catalan sausage; and
• an order of the Generalitat of Catalonia of July 1 2005 which included ‘espetec’ in a list of traditional local pork products.

With regard to the alleged violation of Article 7(3) of the regulation, the court agreed with OHIM that Sogepi had not established that its mark had acquired distinctiveness through use. The court stated that, although OHIM had found that the isolated use of the mark had not been sufficiently demonstrated, it had also examined its use as part of other trademarks owned by Sogepi, in which the term ‘espetec’ was used in conjunction with the name Casa Tarradellas. OHIM had thus correctly concluded that Sogepi had failed to demonstrate the distinctiveness of the ESPETEC mark.

Antonia Torrente, Grau & Angulo, Barcelona