Monaco government fails to register MONACO for range of goods and services

European Union

In Marques de l’État de Monaco (MEM) v Office for Harmonisation in the Internal Market (OHIM) (Case T-197/13, January 15 2015), the General Court has upheld OHIM’s refusal of an application by the government of Monaco to register the word mark MONACO for a range of goods and services, including printed matter, transportation services and entertainment services.

The application was filed in December 2010 and, on examination in April 2011, OHIM issued a notice of provisional refusal for some goods and services in Classes 9, 16, 39, 41 and 43 of the Nice Classification. The grounds were that the mark was devoid of distinctive character and descriptive for those goods and services.

Following written submissions by MEM, in November 2011 the OHIM examiner upheld the refusal for the majority of the goods and services against which the original objection was raised. In January 2012 MEM appealed against the decision and, in January 2013, the Fourth Board of Appeal of OHIM rejected the appeal. The essence of the decision was that the mark consisted exclusively of a sign which could designate geographical origin - that is, that MONACO would be understood as such throughout the European Union or in part of the European Union.

MEM appealed to the General Court. In relation to the refusal under Article 7(1)(c) and Article 7(2) of the Community Trademark Regulation (207/2009) (ie, on grounds of descriptiveness), MEM’s appeal had four limbs:

  1. the Board of Appeal had misjudged the scope of Article 7(1)(c) in not taking into account the fact that the applicant was a non-EU state;

  2. the board had committed an error of law in its determination of the general interest to be protected under Article 7(1)(c);

  3. the board had made a clear error in its consideration of the relevant public; and

  4. there was no link between the geographical location and the goods and services, and there was a clear error in the consideration of the relevant geographical criteria.

The General Court rejected these arguments: although MEM was entitled to own a CTM registration, it did not have any inherent right to do so if the mark in question was descriptive, and the Board of Appeal had established a sufficiently direct and concrete link between the goods and services and the mark to mean that it was indeed descriptive.

In relation to the refusal under Article 7(1)(b) and Article 7(2) (ie, on grounds of lack of distinctive character), MEM claimed that the Board of Appeal had committed an error of law in finding that there was in overlap between Article 7(1)(b) and Article 7(1)(c) and an error of interpretation in finding that the mark was devoid of distinctive character, particularly in that it implied renown and luxury. The General Court dismissed these arguments, stating that there was a clear overlap between Article 7(1)(b) and Article 7(1)(c) (ie, that a descriptive mark could not be distinctive), and that the mark would be perceived by the relevant consumer as conveying information rather than as a badge of origin. The General Court therefore rejected the appeal in its entirety, awarding costs against MEM.

It is worth noting that, although the application was refused for what might be considered core goods and services, MEM’s application was accepted for a range of goods and services and, if not opposed, it will be registered for those goods and services, giving MEM some monopoly rights in relation to the mark. In view of the nature of the mark, and the apparent inability of MEM to show that the mark had acquired distinctiveness through use, the outcome is otherwise not wholly surprising.

Chris McLeod, Squire Patton Boggs (UK) LLP, London

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