Trademark containing geographical indication rejected
In Abadía Retuerta SA v Office for Harmonization in the Internal Market (OHIM) (Case T-237/08, May 11 2010), the General Court (Third Chamber) has dismissed Abadía Retuerta SA's appeal against OHIM’s refusal to register CUVÉE PALOMAR as a Community trademark (CTM).
The First Board of Appeal of OHIM had held that the OHIM examiner was right in finding that CUVÉE PALOMAR, when used in connection with “wines”, fell foul of Article 7(1)(j) of the Community Trademark Regulation (40/94) - in other words, the mark contained a geographical indication which did not designate the origin of the wines that it identified.
The board had concluded that Article 23(2) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), the wording of which was incorporated into Article 7(1)(j) of the regulation, constitutes a lex specialis which lays down a specific prohibition regarding the registration of geographical indications identifying wines and spirits.
The board had further stated that the prohibition contained in Article 23(2) of the TRIPs Agreement is absolute and unconditional, as opposed to the general prohibition contained in Article 22(3), which prohibits the registration of marks containing geographical indications in connection with goods that do not originate from the territory to which they refer, provided that their use is “of such a nature as to mislead the public as to the true place of origin”.
El Palomar is the name of a local administrative area in the sub-region of Clariano, Spain, which constitutes an area of production protected by the registered designation of origin 'Valencia'. Consequently, the board had concluded that the registration of the mark CUVÉE PALOMAR to designate wines not originating from that area should be refused pursuant to the applicable EU and national law.
The board had also noted that, while the official name of the local administrative area is 'El Palomar' (literally, 'the Dovecot'):
- the term 'Palomar' constitutes the essential element on which the geographical indication is based; and
- the Spanish Ministerial Order of October 19 2000 refers to the area as 'Palomar' without the definite article 'El'.
In the opinion of the board, the absolute ground for refusal laid down in Article 7(1)(j) of the regulation was applicable to the mark applied for, even though the initial list of goods was amended to read “wines originating from the estate known as Pago Palomar”. As that estate was located in the area of Sardón de Duero (Valladolid), such restriction merely reinforced the fact that the mark applied for contained a geographical indication which did not correspond to the origin of the goods that it described. Abadía Retuerta appealed.
The General Court dismissed the action in its entirety, finding that Article 7(1)(j) is applicable whenever a mark contains, or consists of, a geographical indication identifying a wine which does not originate from that area, irrespective of whether the mark constitutes a false or deceptive indication.
This is also the case where the mark in question contains, or consists of, elements which enable the relevant geographical indication to be identified with certainty, without it being necessary to consider the definite (eg, 'El') or indefinite articles which may form a part of them. To this effect, it is also irrelevant that a name which benefits from a registered designation of origin is unknown to the general public or the relevant class of persons.
Finally, the General Court held that Abadía Retuerta could not claim the benefit of Article 24(5) of the TRIPs Agreement, which applies to trademarks applied for, or registered, in good faith before a specific geographical indication is granted protection in the country of origin. Abadía Retuerta owns, among others:
- a Spanish registration for CUVÉE PALOMAR;
- an international registration for CUVÉE PALOMAR designating Austria, France, Germany, Italy, Portugal and the United Kingdom; and
- the CTMs ABADIA RETUERTA CUVÉE PALOMAR and PAGO PALOMAR.
The General Court took the time and trouble to verify the existence of a Spanish ministerial order concerning the registered designation of origin 'Valencia' (amended by the Regulation of November 29 1995), which specifically refers to the local administrative area of Palomar. One may wonder whether such obiter dictum was meant as a 'lay low and sing small' warning to Abadía Retuerta, whose PALOMAR marks were all applied for after 1995.
Celia Sueiras, Garrigues, Madrid
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