In the Case no. T-2/21 concerning the trade mark protection in the EU, the General Court of the EU (the “General Court“)assessed whether the defendant, the European Union Intellectual Property Office (the ”EUIPO“), was justified in refusing the application of the claimant, Emmentaler Switzerland, for registration of the trade mark “emmentaler” as a cheese with a protected designation of origin.
A protected designation of origin is a quality scheme protected at EU level covering agricultural products and foodstuffs originating in a particular region, place or country. The names of those products most closely linked to the geographical area in which they are produced are protected as protected designations of origin, as the geographical area influences their characteristics. All production and processing operations must take place in the defined geographical area and the raw materials used must originate from that area. A protected designation of origin represents a high level of protection that severely limits the possibility of producing or growing a crop or food under the name of protected trademark.
The EUIPO refused the application for registration on the basis of Article 7(1)(c) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (the “Regulation“), which prohibits the registration of trade marks consisting exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service. Such signs are descriptive, which is closely related to generic signs. In both cases, such signs have no distinctive character and are considered incapable of performing the essential function of a trade mark, namely to identify the commercial origin of the product or service.
In its judgment of 24 May 2023, the General Court upheld the decision of the EUIPO on the descriptiveness of the trade mark applied for, that the sign »emmentaler« is widely and commonly understood by the relevant German public as designating a type of cheese. As regards the examination of the presence of descriptive signs, the EUIPO focused only on the German market, which is, however, sufficient to refuse registration of the sign. The General Court held that the EUIPO was correct in finding that the mark applied for is descriptive in a part of the EU, namely in one EU Member State.
Furthermore, the General Court noted, with regard to the protection of the trade mark applied for as a collective mark, that Article 74(2) of the Regulation provides that, by way of derogation from Article 7(1)(c) of the Regulation, signs and indications which may serve, in trade, to designate the geographical origin of the goods or services in question may constitute EU collective marks. However, according to the General Court, that derogation must be interpreted narrowly and, therefore, collective marks cannot include signs which are regarded as indicating the type, quality, quantity, purpose, value, time of manufacture or other characteristics of the products in question, but only signs which are to be regarded as indicating the geographical origin of those products. Since the mark applied for is descriptive of a type of cheese for the relevant German public and is not perceived as an indication of the geographical origin of that cheese, the General Court concludes that it is not entitled to protection as a collective mark.
