Holtrop S.L.P. blog

Trade marks and geographical indications are both in their own way identifiers of origin. As such, even if the former refer to commercial origin while the latter refer to a geographical location, it is easy to see how there is huge potential for overlap and conflict between the two. 

From 23 March 2016 a new Trade Mark Directive (2015/2436) and Regulation (2015/2424) have entered into force introducing changes such as, a new system of fees called “one-class-per-fee system”, which means that applicants are going to pay a lower fee if they only apply for one class or, the elimination of requirement of graphic representability as long as the representation is in a “clear, precise, self-contained, easily accessible, intelligible, durable and objective” manner. This post, however, will focus on the absolute grounds of refusal of registration which have been extended to include, in addition to designations of origin and geographical indications, protected traditional terms for wine (art.4.1.j) and traditional specialities (art. 4.1.k).

So, what is wrong with registering geographical names as trade marks? In synthesis, such a trade mark would inevitably be either descriptive or deceptive. If a mark is descriptive or lacks distinctive character, it cannot serve as a business identifier and it makes it impossible for other traders to market their products. By the same logic, if a geographical term were allowed registration, consumers could be misled as to the geographical origin of the goods (i.e. The Greek Yogurt decision for a yogurt not originating from Greece).

Surely enough, back in 1999, the ECJ established the principle of public policy by which geographical names cannot become subject to private trade mark rights in the famous Chiemsee case. This principle was later crystalized in art. 3.1.c of European Trade Mark Directive No. 2008/95/EC. According to this article, only trade marks which exclusively consist of a geographical origin will be invalid, thereby significantly narrowing its scope of application. At the same time however, the article is broad, as it prohibits registration of any designation of a place currently associated with the category of goods concerned or, any instance when it is reasonable to believe such association may occur in the future. Worryingly, these shortcomings are not resolved by the new Directive as its art. 4.1.c reproduces the exact wording of its predecessor. 

To sum up then, while the new EU regulation for trade marks aims at making the system more efficient, clearer and limiting the line between trade marks and different forms of geographical indications, it has not dealt with the existing loophole by which a combined word/device mark including a geographical name would not in principle fall within the exclusion. It seems that public interest is best served by the protection of free competition rather than property rights, and therefore unregistrability of terms descriptive of the goods should not be an exception, but an inherent limitation.