Mark consisting of geographical indication registered for wines

Lithuania

The examiner of the Lithuanian State Patent Bureau has accepted applicant Soto de Torres SLU’s arguments that the mark IBERICOS was distinctive for wines and did not describe the geographical origin of the goods.

On February 2 2011 the examiner had refused to extend protection of the international word mark IBERICOS (Registration 1011787) to Lithuania, holding that it lacked distinctive character and described the geographic origin of goods.

The examiner stated that the mark consists of the Spanish word ‘Ibericos’, which means ‘Iberians’ in English; the Iberian peninsula is located in southwest Europe and includes Spain and Portugal. Therefore, the mark identified that the goods were connected to the Iberian peninsula or its inhabitants, and indicated the geographical origin of the goods. A sign which consists of a geographical indication cannot be registered as a trademark. The mark at issue did not contain any other elements which could add distinctive character to it and, therefore, it could not distinguish the goods of the applicant from those of other undertakings.

The applicant filed a request for re-examination. It argued that the sign applied for could not be held to be descriptive in relation to the goods at issue (“wines”), as the word ‘Ibericos’ had nothing to do with the goods. The applicant explained that the word ‘Ibericos’ could be linked to various Iberian tribes who lived in the historical regions of the Old World: the Iberian peninsula (modern day Spain and Portugal), Caucasian Iberia (an ancient Georgian Kingdom) or the Iberia theme (an ancient Byzantine province). Thus, the word could not be linked to a specific geographical place or their inhabitants.

The applicant further argued that the word ‘Ibericos’ was not descriptive of “wines”, as it could describe only a human being. Therefore, the word did not describe the goods and/or their characteristics, and had not become generic or common for the registered goods. Moreover, the addition of the letter ‘S’ to the word ‘Iberico’ (‘Iberian’) gave the mark a minimal distinctive character, which allowed consumers to distinguish the goods bearing the mark from those of other undertakings (see Eurocool Logistik v OHIM (Case T‑34/00)).  

In accordance with the Office for Harmonisation in the Internal Market’s guidelines on trademark examination, a three-step test should be carried out and the following questions should be asked when deciding whether a sign consisting of a geographical indication can be registered as a trademark:

  • Is the sign known as a geographical term?
  • Is the sign understood and perceived by consumers as a geographical place in connection with the claimed goods or services, and is it possible to establish a direct or indirect link between the claimed goods and a certain territory, region or place?
  • Does the sign relate to the quality, reputation and other essential characteristics of the goods due to their geographical origin?

For example, the EU General Court has allowed the registration of the mark PORT-LOUIS (Port-Louis being the capital city of Mauritius). The court found that it had not been shown that the city of Port-Louis was well known, or that it was likely to become well known, among the relevant public with regard to the manufacture or sale of household textile articles, and that the relevant public was unlikely to believe that the category of goods concerned originated from Port-Louis (see Rewe-Zentral AG v OHIM (Case T-230/06)).

Analysing the answers to the above test, it was not possible to relate any features of the goods bearing the IBERICOS mark, such as their quality, reputation and any other essential characteristics, with a certain geographical territory, taking into account that a possible meaning of the mark referred to historical tribes.

In addition, the applicant filed evidence that the mark IBERICOS had been registered in other countries in Europe and worldwide. The applicant also argued that its international trademark IBERICO (Registration 975648) was granted protection in Lithuania on August 11 2008 for alcoholic beverages in Class 33 of the Nice Classification.

Further, the applicant provided evidence that it had used the mark IBERICOS continuously for wines, and that the Ibericos wine is recognised and known by consumers and experts in Lithuania.

Based on the foregoing, the examiner concluded that the mark IBERICOS could be registered as a trademark and, on May 30 2012, the mark was granted protection in Lithuania.

Ausra Pakeniene, AAA Baltic Service Company - Law Firm, Vilnius

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