http://ipkitten.blogspot.com/2023/05/emmentaler-cannot-be-eutm-says-general.html
With a decision dated 24 May 2023, the General Court (GC) held that the term “EMMENTALER”, as designating a type of cheese, cannot be protected as European Union trade mark (EUTM), having a descriptive character in part of the European Union (EU), which may be a single Member State (in this case Germany).
The GC also confirmed
that the trade mark applied for could not be protected as a collective mark, with
the derogation provided by Art. 74(2) of Regulation 2017/1001 to Art.
7(1)(c) requiring a strict interpretation.
On 14 October 2017, Emmentaler Switzerland –
Consortium Emmentaler AOP (the Applicant) obtained the International
Registration No 1378524 for the word sign “EMMENTALER” from the International
Bureau of the World Intellectual Property Organization. Registration was sought
for products in class 29, namely for cheeses with the protected designation of
origin “EMMENTALER”.
On 7 December 2017, the international
registration was notified to the European Intellectual Property Office (EUIPO).
With decision of 9 September 2019 the examiner rejected the application for
registration on the basis of Article 7(1)(b) and (c) of Regulation
2017/1001 and Article 7(2) of the same regulation. The examiner found
that the trade mark applied for was descriptive and not capable of designating
the geographical origin of the goods.
On 25 October 2019, the applicant lodged an
appeal against the examiner’s decision. With decision dated 12 February 2020 (R
2402/2019-2), the Board of Appeal dismissed the appeal on the basis of
Article 7(1)(c) of Regulation 2017/1001, the sign being
held descriptive.
The Applicant appealed to the General Court
contesting the decision with regard to the descriptive character and to refusal
of protection of the sign as a collective trade mark as well.
The
General Court’s decision
a)
Descriptive character
As regards the descriptive nature of the mark
applied for, the GC held that the relevant German public immediately
understands the sign “EMMENTALER” as designating a type of cheese. For the
registration of a sign to be refused, it is sufficient that the sign has a
descriptive character in part of the EU, which may be just a single Member
State (in this case Germany).
In particular the GC recalled a) the definition of
the word “EMMENTALER” by the Duden dictionary, b) the massive
production and sale of “EMMENTALER” in Germany without any specific reference
to the origin of the product, c) the German cheese
regulation, d) the EU position during the negotiation of the Agreement
between Switzerland and the EU, e) the general standard for Emmental drawn up
by the Codex
Alimentarius Commission, f) the judgment in C-448/98
stating that emmental cheese is lawfully manufactured and marketed in EU Member
States other than France.
The GC therefore confirmed the decision of the
Board of Appeal and held that the mark applied for is descriptive, without it
being necessary to examine the elements which do not concern the perception of
the relevant German public.
b) Refusal
of protection as a collective trade mark
As regards to protection sought as collective
trade mark, the GC stated that, by way of derogation from Article
7(1)(c) of Regulation 2017/1001, signs or indications that may be used
to identify the geographical origin of the goods or services may constitute
collective trade marks according Article
74(2) of that Regulation. This derogation has to be interpreted and
applied strictly. Therefore, only signs that will be considered as being an
indication of the geographical origin of goods will fall within the application
of that derogation and enjoy protection as collective trade mark (see T-341/09).
On the contrary, all signs that are regarded as an indication of the kind,
quality, quantity, intended use, value, time of production, or other
characteristic of the goods must be excluded from that protection. Therefore the
Court concludes that it does not enjoy protection as a collective trade mark.
The
battle on cheese trade marks
There are previous
decision by EU courts relating to cheese and trade marks. We may recall the
decision C-614/17
on Spain’s Queso Manchego (commented by IPKat here)
and the decision C-132/05
on Italy’s Parmigiano Reggiano (commented by IPKat here).
More recently, on 3rd
March 2023 the U.S. Court of Appeals for the Fourth Circuit stated that
the name “gruyere” can be used to label cheeses from outside of the Gruyère
region of Switzerland and France, thus upholding a decision of the United
States Patent and Trademark Office (USPTO) ruling that “gruyere” can lawfully be
used to describe cheese regardless of where it was made. In this decision the
U.S. court outlined three categories of evidence, similar to those highlighted
by the decision in comment: the US Food and Drug Administration’s standard of
identity for gruyere cheese; the prevalence of gruyere cheese produced outside
of Switzerland and France, including domestically in the United States; and the
common usage of the term.
Picture by Arianna Antonelli
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