General Court annuls two OHIM decisions in cases involving earlier PGI

In Federación Nacional de Cafeteros de Colombia v Office for Harmonisation in the Internal Market (OHIM) (Cases T-387/13 and T-359/14), the General Court has annulled two decisions of the Fifth Board of Appeal of OHIM.

Federación Nacional de Cafeteros de Colombia (FNCC) is a trade association that represents Colombian coffee growers. FNCC had filed a notice of opposition in Case T-387/13 and an application for a declaration of invalidity in Case T-359/14. Both actions were based on the protected geographical indication (PGI) 'Café de Colombia', registered in the European Union under Regulation 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (the PGI Regulation). An application for registration of the PGI 'Café de Colombia' was filed with the European Commission on June 8 2005 and granted in respect of “coffee”.

The Board of Appeal stated in both cases that Article 8(4) of the Community Trademark Regulation (207/2009)  was applicable pursuant to Article 14(1) of the PGI Regulation provided that three cumulative conditions were met:

1. the filing date of the PGI had to be earlier than that of the Community trademark (CTM) application;
2. the PGI and the trademark applied for had to relate to the same class of product;
3. one of the situations described in Article 13(1) of the PGI Regulation had to exist, namely:
   • direct or indirect commercial use of a registered name in respect of products not covered by the registration insofar as those products are comparable to the products registered under that name or insofar as using the name exploits the reputation of the protected name;
   • any misuse, imitation or evocation; or
   • any form of false or misleading indication as to the origin, nature or qualities of the products.

In Case T-387/13, Nadine Hélène Jeanne Hautrive filed an application on 6 July 2010 for registration of the following CTM with OHIM:

The goods and services in respect of which the registration was sought fell within Classes 16, 25 and 43 of the Nice Classification. The services in Class 43 comprised “services for providing food and drink; restaurants, bars and cocktail bar services; catering services; stores administering of food and drink indoor or take away; food and beverage services; sandwich bars, snack bars”. The CTM application was published in the Community Trademarks Bulletin No 166/2010 of September 6 2010.

On September 22 2010 FNCC filed a notice of opposition with the Opposition Division of OHIM, under Article 41 of the Community Trademark Regulation, against the registration of the mark applied for in respect of all the services in Class 43. The opposition was based on the PGI 'Café de Colombia”' and the grounds relied on in support of the opposition were those set out in Article 8(4) of the Community Trademark Regulation.

The Opposition Division rejected the opposition on March 16 2012, stating that the services in Class 43 covered by the mark applied for and the “coffee” for which the PGI 'Café de Colombia' was registered did not belong to the same class of product within the meaning of Article 14(1) of the PGI Regulation. Since one of the cumulative conditions under Article 14(1) was not met, registration of the trademark applied for could not be refused on those grounds.

On April 17 2012 FNCC appealed the decision to the Board of Appeal of OHIM. The Board of Appeal held that the link between the services covered by the mark applied for and coffee, as protected by the PGI, was too weak to warrant a finding that those services and products were “in the same class of product” as required by Article 14(1). Consequently, the appeal was dismissed.

In Case T-359/14, Accelerate sal was granted registration of the following figurative CTM on December 9 2010:

The mark was registered for goods in Class 30 (“tea, cocoa, sugar, rice, tapioca, sago; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice”) and services in Class 43 (“services for providing food and drink; temporary accommodation”).

On December 26 2011 FNCC filed an application with OHIM for a declaration of invalidity of the registered trademark. The application was based on the PGI 'Café de Colombia'. On April 26 2013 the application was rejected by the Cancellation Division of OHIM.

The applicant filed a notice of appeal, and by a decision of March 27 2014 the Board of Appeal of OHIM upheld the appeal in part for some of the goods covered by the contested mark, namely, in respect of “tea; cocoa; sugar” in Class 30. The board held that there was a sufficiently serious risk of the relevant public - namely, the general public - being misled as regards a specific characteristic presented by “tea; cocoa; sugar” covered by the contested mark, namely those goods originating in Colombia.

In both cases it was undisputed that the earlier right relied on in support of the opposition and invalidity proceedings was the PGI 'Café de Colombia', which is governed by the PGI Regulation. It was also undisputed that the PGI had priority over the applied-for and contested marks, respectively.

Against this background, it was therefore incumbent on the Board of Appeal to take account of the PGI Regulation in order to determine whether it conferred on a PGI proprietor the right to prohibit the use of a subsequent trademark and thus assess whether, on the basis of the PGI Regulation, the applicant could oppose the registration of the mark applied for (Case T-387/13) and request a declaration of invalidity of the contested mark (Case T-359/14).

The opposition (Case T-387/13) and the application for a declaration of invalidity (Case T-359/14) were based on Article 8(4) of the Community Trademark Regulation. Since the protection conferred on PGIs against commercial use of a protected name stems from Article 13(1) of the PGI Regulation, the General Court stated that Article 8(4) of the Community Trademark Regulation and Article 13(1) of the PGI Regulation should be applied in combination.

With regard to OHIM’s argument that the Court of Justice of the European Union had previously held that Article 14 of Regulation 2081/92 (now Article 14 of the PGI Regulation) specifically governs the relationship between names registered under the PGI Regulation and trademarks, and according to which that article would constitute a lex specialis applicable when a PGI is in conflict with an application for registration of a trademark, the General Court noted that that judgment did not concern proceedings brought before OHIM on the basis of Article 8(4) of the Community Trademark Regulation. Against this background, OHIM could not take a general statement out of context in order to claim that it also applied to the present cases. Therefore, the board had erred in applying the provisions of Article 14 of the PGI Regulation in the context of an opposition based on Article 8(4) of the Community Trademark Regulation as set out by the OHIM Guidelines.

The court held that Article 13 of the PGI Regulation must be regarded as relating to opposition and invalidity proceedings based on Article 8(4) of the Community Trademark Regulation, whereas Article 14 of the PGI Regulation must be regarded as concerning proceedings relating to the absolute grounds for refusal based on Article 7(1)(k) of the Community Trademark Regulation.

The court concluded that an error made by the Board of Appeal could only lead to the annulment of the decision if the error had a significant impact on the decision. If an error could not have had a significant effect on the outcome, the argument based on such an error could not in itself justify the annulment of the contested decision. OHIM’s argument that the concept of “same class of product” (Article 14 of the PGI Regulation) and that of “comparable goods” (Article 13 of the PGI Regulation) are interpreted in the same way did not relate to all the situations invoked by the applicant. Therefore, the Board of Appeal had, by failing to apply Article 13 of the PGI Regulation, not examined whether the opposition (Case T-387/13) or application for a declaration of invalidity (Case T-359/14) could be upheld insofar as it was based on the various situations covered by the provision invoked by the applicant.

The court thus decided that the contested decisions must be annulled.

Nina Ringen, Rønne & Lundgren, Copenhagen