Grana name is not generic, says CFI

European Union

In Consorzio per la tutela del formaggio Grana Padano v Office for Harmonization in the Internal Market (OHIM) (Case T-291/03), the Court of First Instance (CFI) has annulled the decision of the Board of Appeal of OHIM in which the board found the name grana to be generic.

On February 2 1998 the Italian company Biraghi SpA applied for the registration of the word mark GRANA BIRAGHI as a Community trademark. On October 22 1999 the consorzio for the protection of the Grana Padano cheese filed an application under Article 55 of the Community Trademark Regulation (40/94/EEC) for a declaration that the trademark GRANA BIRAGHI was invalid, since it was contrary to the protection of the designation of origin 'Grana Padano'.

On November 28 2001 the Cancellation Division of OHIM allowed the application for a declaration of invalidity. Biraghi appealed, claiming that the term 'grana' had become descriptive and generic, and that it could thus be used freely. On June 16 2003 the First Board of Appeal of OHIM rejected the application for a declaration of invalidity of the mark GRANA BIRAGHI. The board reasoned that since the word 'grana' was generic and described an essential quality of the goods in question, the existence of the protected designation of origin 'Grana Padano' did not preclude the registration of the sign GRANA BIRAGHI as a Community trademark.

On September 12 2007 the CFI annulled the board's decision. It held that the board had erred in finding that the existence of the protected designation of origin 'Grana Padano' did not preclude the registration of the mark GRANA BIRAGHI for the purpose of Council Regulation 2081/92.

The CFI observed that, in order to establish whether a name has become generic under Article 3 of Regulation 2081/92, account must be taken of all factors, in particular:

  • the situation in the member state from which the name originates and in areas of consumption;

  • the situation in other member states; and

  • the relevant national and EU laws.

According to the CFI, the board:

"did not take into consideration any of the factors which make it possible to carry out the necessary analysis of the possibly generic nature of a name or of one of its components; nor has it called for any opinion polls of consumers or for the opinion of experts qualified in the subject area."

The evidence provided by the board consisted merely of extracts from dictionaries and internet research. In this respect, the CFI pointed out that the frequency with which a term appears on the Internet is not, by itself, capable of establishing the generic nature of a name. The CFI observed that:

"contrary to the findings of the board, the dictionaries showed that the name grana is used in Italian as an abbreviated form of the name Grana Padano and that the name grana is linked in fact and in people’s minds to the Padanian origin of that product."

Therefore, the CFI found that the word 'grana' is not generic and cannot be used in another mark.

Margherita Bariè and Pietro Pouchè, Carnelutti Studio Legale Associato, Milan

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