Article 7, paragraph 1, letter b) of the EU Trademark Regulation (2017/1001) provides that trademarks devoid of any distinctive character cannot be registered.
According to the letter c) of the same article 7, the following are included in the category of trademarks devoid of any distinctive character:
“Trademarks which consist 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”.
The interpretation of such article by EU case-law helps to understand when a mark consisting of a geographical name should be considered descriptive.
In particular, It is useful to read some paragraphs of the judgment Cloppenburg, case T-379/03, 25 October 2005.
Geographical descriptiveness of the European Union trademark
As regard signs or indication which may serve to designate the geographical origin of the categories of goods in relation to which registration of the mark is applied for, the Court affirmed that
- “it is in the public interest that they remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer tastes by, for instance, associating the goods with a place that may give rise to a favorable response” (Cloppenburg, T-379/03, paragraph 33).
- In the above mentioned judgment it is also reiterated the principle that it is not possible to register as trademarks geographical names which indicate specific geographical locations which are already famous for the category of products or services concerned, as well as it must be excluded “the registration of geographical names which are liable to be used by undertakings and must remain available to such undertakings as indications of the geographical origin of the category of goods concerned” (Cloppenburg, paragraph 34).
- Vice versa, article 7 of the Community Trademark Regulation does not prohibit the registration of geographical names which are not known to the relevant class of persons, as well as allows the registration of “names in respect of which, because of the type of place they designate, such persons are unlikely to believe that the category of goods concerned originates there or was conceived of there” (Cloppenburg, paragraph 36).
- In light of the above, the Court state that “a sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding the relevant persons have of it, on the other” (Cloppenburg. Paragraph 37).
First of all, it is necessary to establish if the geographical name is known to the relevant class of persons as a place. Secondly, it is necessary to establish if, in the mind of the relevant class of persons, such name suggests a current association with the category of goods or service of interest, or is it could be reasonable to assume that the public can establish a connection between the name and the category of goods or services in question.
“In making that assessment, particular consideration should be given to the relevant class of persons’ degree of familiarity with the geographical name in question, with the characteristics of the place designated by the name, and with the category of goods or service concerned” (Cloppenburg, paragraph 38).
Even if the relevant public recognizes the name as an indication of a specific geographical place, this does not automatically mean that the registration of the name as a trademark should be rejected.
In this regard, the Court states that:
“In order to examine whether the conditions for application of the ground for refusal to register at issue have been satisfied, account must be taken of all the relevant circumstances, such as the nature of the goods or services designated, the greater or lesser reputation, especially within the economic sector involved, of the geographical location in question and the relevant public’s greater or lesser familiarity with it, the customs obtaining in the area of activity concerned and the question to what extent the geographical origin of the goods or services at issue may be relevant, in the view of the persons concerned, to the assessment of the quality or other characteristics of the goods or services concerned”. (Cloppenburg, paragraph 49).