Date: 27 May 2019
A couple of recent cases before the General Court serve to illustrate the different ways in which geographical names are treated under EUIPO practice depending on the degree of familiarity with the geographical name, the characteristics of the place and the category of goods concerned.
In the first case, St. Andrews Links Ltd. v EUIPO (T-790/17), the Court upheld the Board of Appeal’s rejection of the mark ST ANDREWS for the majority of the services applied for in Class 41.
In 2010, St Andrews Links Ltd (the commercial wing of the St Andrews Links Trust) applied to register the word sign ST ANDREWS as a EUTM in Classes 25, 28, 35 and 41. For those who do not know, St Andrews Links is located in the town of St Andrews, Fife, Scotland, and it is regarded as the “Home of Golf”. St Andrews Links Ltd runs the seven public golf courses, including the Old Course, considered to be the oldest golf course in the world, dating back to the 15th century.
The EUTM application was initially rejected by the Examiner for all of the goods and services applied for, on the basis that ST ANDREWS was descriptive of certain positive characteristics of the goods and services covered and that the evidence provided by St Andrews Links Ltd was insufficient to prove acquired distinctiveness through use. The Fourth Board of Appeal took the view that “the expression ‘St Andrews’ referred above all to a town known for its golf courses though not particularly for the manufacturing or marketing of clothing, footwear, headgear, games and playthings” and allowed the EUTM application to be published for such goods and services, on the basis that “The relevant consumer will not establish a link between those goods and services and that expression.”
On the other hand, the Board found that such a link could be established between the other services covered by the mark applied for in Class 41 and the expression “st andrews”. Those services could all directly relate to golf sports, in other words to the particular field for which the town of St Andrews was very well- known. Consequently, the use of that expression in connection with those services would be perceived by the relevant public as a descriptive indication of the geographical origin of those services.
St Andrews Links Ltd appealed to the General Court. Although they had previously obtained trade mark registrations for St Andrews name for a range of products, the Board found the evidence provided by the applicant was insufficient to prove acquired distinctiveness through use of the ST ANDREWS mark applied for.
The Court said that “the registration of geographical names as trade marks where they designate specified geographical locations which are already famous, or are known for the category of goods or services concerned” is excluded. Furthermore, the Court said that “the Board of Appeal was entitled to find that there were, in addition to the applicant’s courses, several other major golf courses which lay claim to part of the heritage of St Andrews” and “the Board was entitled to find that the mark applied for could not be registered as an EU trade mark”, and “none of the arguments put forward by the applicant is such as to call in question that conclusion”.
Contrast that decision with the outcome of the opposition between Devin and Haskovo Chamber of Commerce and Industry (T-122/17), in which the General Court overruled the EUIPO and found that DEVIN, the name of a Bulgarian town, could be registered as a EUTM for mineral water.
On 21 January 2011, the Bulgarian bottled water company Devin obtained a EUTM for DEVIN in respect of non-alcoholic drinks in Class 32. In July 2014, Bulgaria’s Haskovo Chamber of Commerce and Industry (HCCI) filed an application for a declaration of invalidity of the mark.
Both EUIPO’s Cancellation Division and Board of Appeal found in favour of the applicant to invalidate under Article 7(1)(c). In the EUIPO’s view, the town of Devin was known by the general public in Bulgaria and a significant proportion of consumers in neighbouring countries such as Greece and Romania, especially as a renowned spa town, and that the name of the town was linked to the geographical origin of the goods in Class 32 covered by the DEVIN mark (especially mineral waters) and, in future, would potentially be understood by a wider European public in view of the marketing efforts being made and the growth of the Bulgarian tourism sector. In addition, Devin had failed to provide any evidence of the distinctive character acquired by the DEVIN mark in markets other than the Bulgarian market.
The EUTM owner appealed again, this time to the General Court. The Court annulled the Board’s decision and rejected the invalidity action. The Court noted first that, even if the Bulgarian consumer recognised the word “devin” as a geographical name, it seemed “extremely implausible” that the EU trade mark DEVIN had not acquired, at least in Bulgaria, a normal distinctive character, without there being any need to rule on its reputation.
With regard to the average Greek or Romanian consumer, the Court noted that the existence of a “tourist profile on the internet” was insufficient to establish the knowledge of a small town by the relevant public abroad. Furthermore, the fact that the town of Devin had a “considerable tourism infrastructure” didn’t warrant the conclusion that such a consumer could have knowledge of the town beyond its borders or establish a direct link with it.
The Court pointed out that, by wrongly focusing on foreign tourists, in particular Greeks or Romanians, who visit Bulgaria or Devin, the Board failed to consider the entire relevant public, consisting of the average consumer of the EU, in particular from those Member States. In that regard, the Court considered that that the average consumer of mineral water and beverages in the EU did not possess a high degree of specialisation in geography or tourism and that there was no specific evidence to establish that such a consumer perceived the word “devin” as a geographical place in Bulgaria.
Overruling the EUIPO, the Court found that DEVIN could be registered as an EU trade mark for mineral water, but stressed that the general interest in preserving the availability of a geographical name such as that of the spa town of Devin was protected on the basis that the name would remain available to third parties not only for descriptive use, such as the promotion of tourism in that town, but also as a distinctive sign in cases of “due cause” and where there was no likelihood of confusion.
The Court concluded that the EUIPO had not established the existence of a sufficient degree of recognition of the town of Devin by the average EU consumer, in particular Greek or Romanian consumers. The proportion of EU consumers who know the town of Devin was very small. It followed that the Board had incorrectly concluded that the contested trade mark was descriptive of a geographical origin as regards the average consumer in the neighbouring countries of Bulgaria, namely Greece and Romania, and in all the other EU Member States.
The public interest in maintaining the availability of geographical names makes sense, as they can be used to indicate the quality and other characteristics of the categories of goods or services concerned and also influence consumer preferences in various ways; for example, by associating the goods or services with a place that might evoke positive feelings. That said, as Devin found, there isn’t a blanket ban on registering geographical names, provided they’re unknown to the relevant public. It is also possible to register geographical names which, because of the characteristics of the place they designate, the relevant public is unlikely to believe that the category of goods or services concerned originates there or was conceived there. However, if the geographical name is capable of designating geographical origin of the goods concerned, then it is necessary to establish an element of distinctiveness in the way the name is understood by the relevant public as denoting a brand and not merely a location because, as St Andrews Ltd found, in the absence of acquired distinctiveness, such a name will be refused registration as a trade mark.