Registrations containing a geographical indication

European Union member states are not at liberty to permit the registration in their territory of any trademark, if the registration of such mark is prohibited in terms of specific EU rules, the European Court of Justice has recently confirmed.

EU law permits the registration of a mark as a geographical indication of the name of a country, region or locality from which a spirit drink originates where a certain quality, reputation or other characteristic of that drink is attributable to its geographical origin. In such cases, an application for registration must be submitted to the European Commission by the member state of origin of the drink together with a technical file listing the specifications which the drink must meet to be able to be designated by the protected geographical indication.

EU law prohibits the registration of trademarks which may adversely affect a protected geographical indication and, as a general rule, where such a mark has already been registered it must be invalidated.

Besides other marks, the regulation specifically mentions ‘Cognac’ as a geographical indication identifying wine spirits originating from France. In this particular case a Finnish company applied in Finland for the registration for spirit drinks of two figurative marks in the form of a bottle label bearing descriptions of the spirit drinks containing the term ‘Cognac’ and its Finnish translation. The Finnish authorities accepted the application for registration. However, a French organisation of cognac producers contested the legality of the registration of such a mark before the Finnish courts. The Finnish court requested guidance from the ECJ as to whether it is permissible in terms of EU law to register national trade marks containing the term ‘Cognac’ for products which, in terms of manufacturing method and alcohol content, do not meet the requirements set for the use of the geographical indication ‘Cognac’.

The European Court of Justice maintained that the use of a mark containing the term ‘Cognac’ for products which are not covered by that indication constitutes a direct commercial use of the protected indication. Such a use is prohibited by EU law in so far as it concerns comparable products. This was the case with the products under examination in these particular proceedings. The court noted that the two Finnish marks incorporated part of the name ‘Cognac’. In practice, this would mean that when the consumer is confronted with the name of the marks on the bottles of the drinks which are not covered by the protected indication, the image triggered in his mind is that of the product whose designation is protected, in this case, French Cognac.

The court pointed out that the geographical indications registered by member states in terms of EU law, are specifically protected against any such evocation or any practice liable to mislead the consumer as to the true origin of the product.

It therefore concluded that, in terms of EU law, the Finnish authorities were obliged to invalidate the registration of the contested marks.

This ruling ascertains that both traders and national authorities of EU member states do not have a free hand in registering any trademark which takes their fancy, particularly so if that trademark is specifically reserved and protected in terms of EU law for a certain category of products which fulfil particular characteristics. Such a rigid stance towards the acceptance or otherwise for registration of a trademark comes as no surprise considering that a trademark is one of the most important assets that a trader possesses throughout the conduct of his commercial operations.

mariosa@vellacardona.com

Dr Cardona is a practising lawyer and a freelance consultant in EU, intellectual property, consumer protection and competition law. She is the deputy chairman of the Malta Competition and Consumer Affairs Authority as well as a member of the National Commission for the Promotion of Equality.