PORT LOUIS registrable for textiles, says CFI

In Rewe-Zentral AG v Office for Harmonization in the Internal Market (OHIM) (Case T-230/06, October 15 2008), the Court of First Instance (CFI) has held that the trademark PORT LOUIS could be registered, despite the fact that Port Louis is the capital of Mauritius.

In February 2004 a predecessor of Rewe-Zentral AG filed an application for the registration of PORT LOUIS as a Community trademark for goods in Classes 18, 24 and 25 of the Nice Classification (including clothing and home linen). OHIM had no objections and published the mark. However, after receiving observations from a third party, OHIM rejected the application. Rewe appealed to the Board of Appeal of OHIM. The board dismissed the appeal, holding that PORT LOUIS:

indicated the geographical origin of the goods in question under Article 7(1)(c) of the Community Trademark Regulation (40/94); and
lacked distinctiveness under Article 7(1)(b).

Rewe appealed to the CFI, arguing that:

the city of Port Louis is unknown (even if the relevant public knows the island of Mauritius); and
the relevant public was unlikely to establish a link between the textile industry and Port Louis.

The CFI limited its decision to textiles in Classes 24 and 25. This is slightly surprising, as the application covered other goods that may be made of textile material - in particular, goods in Class 18 (eg, bags and suitcases) may also include textiles.

The CFI held that there would be a general interest in keeping the mark free for use if it was proven that the relevant consumers (ie, consumers from France and the United Kingdom) established a link between the goods and the geographical location at issue. However, the CFI clearly stated that a trademark which includes a geographical location could not be refused registration if:

the geographical location is not well known; and
the mark is not recognized as a geographical location in relation to the relevant goods and/or services.

Based on the evidence examined by the Board of Appeal, the CFI found that the latter had failed to prove that Port Louis was a known geographical indication on the following grounds:

The current economic relations between Mauritius, the United Kingdom and France, and the fact that most exports from Mauritius are intended for the United Kingdom and France, were insufficient to prove that Port Louis is known as a geographical location in the United Kingdom and in France;
The fact that Mauritius was a colony of the United Kingdom and France was insufficient to prove that Port Louis is known as the capital of Mauritius; and
The fact that Port Louis is the economic centre of Mauritius did not imply that consumers recognized Port Louis as a geographical location.

The CFI also held that the board had failed to prove that Port Louis was well known for its textile industry. The court held as follows:

The fact that certain textile manufacturers started their business in Port Louis did not imply that the relevant public would establish a connection between Port Louis and the textile industry;
The fact that most economic activities in Mauritius are concentrated in Port Louis did not imply that Port Louis is well known for its textile industry; and
Although the textile industry is a significant source of income for Mauritius, the sugar industry is the most important industry of the island.

In addition, the CFI held that Port Louis was unlikely to be known for its textile industry in the future on the following grounds:

The fact that tourism in Mauritius has increased in the past years did not imply that the textile industry would increase in Port Louis.
The fact that 40% of tourists in Mauritius come from France gave no indication on the number of visitors to the capital.
The fact that Port Louis is the largest city on the island gave no indication on the importance of the textile industry in Port Louis.
The board's affirmation that the textile industry in Mauritius could grow in the future was only a hypothetical statement. There was no indication that the textile industry would continue to grow or that such growth could lead the public to establish a link between Port Louis and the textile industry.
The board's statement that the substantial growth of the textile industry in Africa and Asia could have an impact on the industry in Mauritius was too general.
The fact that certain designer clothes are produced in Mauritius was insufficient to prove that the relevant public would establish a link between Port Louis and the textile industry.

In light of the foregoing, the CFI concluded that the board had failed to demonstrate that PORT LOUIS was descriptive of the relevant goods and lacked distinctive character. The decision of the board was thus annulled.

The decision shows that the CFI will be prepared to refuse registration of a mark including a geographical location under Article 7(1)(c) of the regulation only if there is sufficient proof that the relevant location must be used by others in relation to the goods or services at issue. The burden of proof is on OHIM and general statements and assumptions will be insufficient. PORT LOUIS might thus find its way into the register.

Carsten Albrecht, FPS Fritze Paul Seelig, Hamburg

PORT LOUIS registrable for textiles, says CFI

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