Pending GI blocks registration of mark containing name of famous Estonian liqueur

The First Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM) has dismissed an appeal filed by AS Liviko against the refusal to register a figurative trademark including the name of the most famous Estonian liqueur, Vana Tallinn, in Class 33 of the Nice Classification (Case No R1299/2013-1, December 2 2013).

On December 22 2010 Liviko designated the European Union to claim protection for International Registration No 1066904, depicted below:

OHIM raised an objection and refused the mark under Article 7(1)(j) of the Community Trademark Regulation (207/2009) based on the geographical indication (GI) ‘Estonian Vodka’, which covers the product category “vodka” under EC Regulation 110/2008.

As the terms used on the trademark were ‘Estonian liqueur’, rather than ‘Estonian vodka’, the circumstances were not directly covered by Article 7(1)(j) of the Community Trademark Regulation, which requires that the trademark consists of a GI, or at least contains a GI, to be refused. OHIM thus referred to a general law principle, lex speciali derogate legi generali, and directly applied the relevant provisions on GIs and protected designations of origin - that is, Article 23(1) and Article 16 of Regulation 110/2008.

The trademark registration covered alcoholic drinks, namely “liqueurs; liqueur-based cocktails and mixed drinks”. The examiner noted that the ground of refusal could be overcome by limiting the list of goods, and requested that the list be limited to goods covered by the GI ‘Estonian vodka’. However, the applicant did not comply with the proposal submitted by OHIM.

One should note that liqueurs do not contain vodka, and that the GI ‘Estonian vodka’ is not yet registered as the Estonian government has not submitted its technical file.

The Board of Appeal confirmed the refusal, finding as follows:

• According to the case law of the Court of Justice of the European Union (ECJ) and of the General Court, Article 7(1)(j) of the Community Trademark Regulation should be applied in accordance with the specific provisions of EU law on the protection of GIs. These provisions can be directly applied in the case of a trademark application.
• Article 23(1) of Regulation 110/2008 provides for the protection of GIs contained in Annex III of that regulation, while Article 16 provides for the scope of protection to be afforded to such GIs.
• ‘Estonian vodka’ is protected even though the technical file (which sets the conditions with which the goods must comply) has not yet been submitted.
• The trademark contains a significant part (‘Estonian’) of the geographical indication ‘Estonian vodka’, as ‘vodka’ merely refers to a type of spirit drink.
• The goods (liqueur and vodka) are comparable because both:
  • are produced through distillation;
  • may have the same physical appearance;
  • may be made from the same raw materials;
  • are consumed on largely identical occasions;
  • are distributed through the same channels of trade; and
  • are subject to similar marketing rules.

The decision raises several crucial points:

• Based on the case law of the ECJ, an applicant cannot rely solely on the Community Trademark Regulation, at least for grounds of refusal based on GIs. While the amendments to the regulation, which includes an amendment to Article 7(1)(j), are still pending, the specific provisions of EU law on GIs must be also considered.
• Although, in some cases, a distinction has been made by OHIM or other EU bodies between wine and other alcoholic drinks, in the present case OHIM considered that liqueur and vodka are comparable merely because they are both alcoholic drinks. This clearly underestimates the consumers’ perception of different alcoholic drinks, at least in the country of origin of Vana Tallinn and its neighbouring states. The Court of Appeal of England and Wales  also found in the VODKAT case (Diageo North America Inc v Intercontinental Brands (ICB) Limited ([2010] EWHC 17 (Ch), January 19 2010; and [2010] EWCA Civ 920, July 30 2010)) that “vodka is vodka” and is the name of a complete category of drinks.
• Had the goods not been considered comparable, then the question would have been whether Vana Tallinn could exploit the reputation of the GI. This could not be the case as no reputation had been established for ‘Estonian vodka’. Arguably, inclusion of the indication ‘Estonian vodka’ in Annex III of Regulation 110/2008 is likely to have been a political move and an attempt to artificially create a new GI, which has not yet materialised.
• In comparing the GI and the trademark at issue, OHIM established that ‘Estonian’ was a “significant part” of the GI, and that this significant part was included in the trademark. However, is the concept of “significant part” truly compatible with Article 10(b) of Regulation 110/2008, under which the applicable criteria are the “misuse, imitation or evocation” of a GI? The fact is that the term ‘Estonian’ is no more distinctive than the term ‘vodka’, and the scope of protection of the GI ‘Estonian vodka’ should not extend beyond the combination of these two words, or beyond misuses, imitations or evocations of the combination of these two words. 
• This case shows the risks involved when the name of a country which does not have a strong reputation with regard to the goods at issue (in contrast to Scotch whiskey and Irish whiskey, for example) is artificially included in a GI. In the present case, such inclusion prevented the registration of a trademark in which the word ‘Estonian’ is clearly recognised as descriptive. Therefore, anyone dealing with trademarks for alcoholic drinks should carefully scrutinise Annex III of Regulation 110/2008, and think twice before using terms such as ‘Svensk’/‘Swedish’, ‘Suomalainen’/‘Finsk’/‘Finland’ or ‘Polska’/‘Polish’.      

Almar Sehver, AAA Legal Services, Tallinn