OLDENBURGER registration for dairy products turns sour

In Nordmilch eG v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has upheld an OHIM decision to reject registration of OLDENBURGER for various dairy products.

Nordmilch applied to register the mark OLDENBURGER as a Community trademark for foodstuffs and beverages in Classes 29, 30 and 32 of the Nice Classification. Oldenburger Fleischwaren GmbH filed an opposition, stating that the mark was an indication of geographical origin and therefore could not be registered. The OHIM allowed the opposition and refused registration on the basis that the mark was similar to the name Oldenburg - a town in Lower Saxony in Germany that has a reputation for agricultural products. Nordmilch's appeal was dismissed by an OHIM Board of Appeal on the grounds that the mark was capable of constituting an indication of geographical origin and that there was a public interest in it remaining freely available.

Nordmilch disagreed and took the matter to the Court of First Instance. It did not dispute the geographical significance of the town Oldenburg but denied that its mark was or could be an exclusive geographical designation of origin for the goods covered by its application. In its view, the indication merely referred to or was derived from a geographical indication. The OHIM maintained that the mark would be immediately perceived by the relevant public as an indication of geographical origin because it was no more than an adjectival form of the place name Oldenburg.

The court defined the relevant public as the average German consumer. It then held that OLDENBURGER was so similar to Oldenburg that it could only be considered to indicate geographical origin. It also upheld the OHIM's argument that even if the Oldenburg name is not well known at present for certain goods covered by Nordmilch's registration, it was reasonable to assume that those goods could be associated with that region in the future.

The court gave short thrift to Nordmilch's claims that its mark was registrable as it would be covered by the limitations in Article 12 of the Community Trademark Regulation, which, among other things, limits the rights of trademark owners so that they cannot prevent third parties honestly using geographical indications. The court held that Article 12 was not designed to make unregistrable marks registrable. It added that Article 12 only applied to registered marks and was not relevant to an application for registration.

It rejected Nordmilch's other arguments and upheld the OHIM's decision to refuse registration.

Chris McLeod, Hammonds, London