The European Court of Justice (ECJ) has held that the essential function of an EU collective mark is not to distinguish goods according to their geographical origin but according to their commercial origin.
The Protection of Geographical Indications and Designations of Origin Regulation (510/2006/EC) (2006 Regulation) relates to agricultural products and foodstuffs from a defined geographical area. If there is a link between the characteristics of certain products and their geographical origin, they may qualify for either a protected geographical indication (PGI) or a protected designation of origin (PDO).
An EU collective mark is a specific kind of EU trade mark available to trade bodies or associations which, under Article 74(1) EU Trade Marks Regulation (207/2009/EC) (EUTM Regulation), is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings.
Article 8 of the EUTM Regulation (Article 8) sets out the following relative grounds on which a trade mark registration may be refused:
- The sign being applied for is identical to an earlier trade mark registered for identical goods or services.
- The sign is similar to an earlier trade mark registered for identical or similar goods or services and there is a likelihood of confusion with the earlier mark.
- The sign is identical with an earlier trade mark registered for similar goods or services and there is a likelihood of confusion with the earlier mark.
- The sign is identical with or similar to an earlier trade mark and the earlier mark has a reputation in the EU and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
D applied to register EUTMs incorporating the word "Darjeeling".
T opposed the registrations on the basis of its earlier EU collective mark DARJEELING for tea and figurative marks incorporating the word "Darjeeling" for clothing. T argued that there was a likelihood of confusion under Article 8(1)(b) as the word "darjeeling" was a protected geographical indication for tea and had also been registered as an EU collective mark. T also argued that there was a risk of an unfair advantage under Article 8(5) in relation to the mark for clothing.
The General Court of the EU refused the applications. It held that there was no likelihood of confusion, particularly due to the lack of similarity between the goods and services. The EU collective mark "darjeeling" had the same essential function as individual EUTMs: to distinguish goods or services according to the specific body from which they originated and not according to their geographical origin. However, the risk of an unfair advantage could not be ruled out in respect of lingerie and clothing as the proposed marks were capable of benefiting from the positive qualities of the earlier marks, specifically the image of sophistication or exotic sensuality conveyed by the word "darjeeling". D appealed and T cross-appealed.
The ECJ dismissed the appeals and cross-appeal. The General Court had been right to hold that the essential function of an EU collective mark was to distinguish the commercial origin of the goods or services of the members of the association that was the proprietor of the trade mark from those of other undertakings, and not to distinguish those goods according to their geographical origin. So it had been right to hold that, in the application of Article 8(1)(b), where the signs were, on the one hand, collective marks and, on the other hand, individual marks, the possibility that the public might believe that the goods and services covered by the signs had the same geographical origin could not constitute a relevant criterion for establishing their identity or similarity.
On the cross-appeal, the ECJ held that in the context of dilution under Article 8(5), the General Court was not inconsistent when it held on the one hand that the average consumer of the product covered by the earlier trade marks (tea) would not be led to believe that the goods and services covered by the trade marks applied for originated from the Darjeeling region, while considering on the other hand that the average consumer of the goods and services covered by the later trade marks applied for (lingerie and clothing) could be attracted by the values and positive qualities connected with the region.
This decision clarifies the differences between geographical indications registered under the 2006 Regulation, and word marks which designate a geographical origin, and the approach to be taken when an opposition is based on an earlier collective mark that refers to geographical origin.
From mid-January 2019 at the latest for national trade mark applications there will be a new ground of refusal based on the fact that there is an earlier conflicting PGI or PDO. This ground of opposition can already be raised against EUTM applications under a new provision, Article 8(6), which came into force in March 2016.
Case: The Tea Board v EUIPO C-673/15 P to C-676/15 P (four joint appeals).
First published in the November 2017 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.