The Grand Board of Appeal of the EUIPO has ruled in an interesting case which concerns deceptive trademarks registered in bad faith.
The case at hand regards the following European trademark registered by the Spanish company Hijos de Moisés Rodríguez González S.A for the goods in class 29 (meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats):
This trademark was attacked by the Irish Ministry for Jobs, Enterprise and the Irish Dairy Board jointly with an invalidation request.
According to both institutions, the registered trademark can lead consumers to think that the branded goods originate from Ireland which could not be the case. What’s more the mark was registered in bad faith because the owner had trade relations with the Irish Dairy Board in the past and tried to registered several similar trademarks for La Irlandesa.
Although EUIPO initially dismissed the request for invalidation, the Grand Board upheld it entirely.
The name La Irlandesa has clear meaning associating with Ireland. In addition, the color and the graphical elements have such connotations too. This can deceive the consumer to think that the products are from Ireland. According to some evidence the mark was used not only for products imported from Ireland but for other goods too.
In order bad faith to be established consideration must be taken of: (a) the origin of the contested sign and its use since its creation; (b) the commercial logic underlying the filing of the application for registration of the sign as an EUTM; and (c) the chronology of events leading up to that filing (T-257/11, COLOURBLIND).
In addition, the concept of bad faith involves a dishonest intention or other deceitful motive that departs from accepted principles of ethical behaviour or honest commercial and business practices (T-795/17, NEYMAR).
Finally, pursuant to Articles 5(4) and 6(1)(b) of the Directive 2005/29/EC (Unfair Commercial Practices Directive), commercial practices are considered ‘unfair’ and therefore dishonest if they contain false information or are in any way such as to deceive the average consumer in relation, inter alia, to the main characteristics of the product, such as its geographical or commercial origin.
Taking into account all of the above, the Grand Board concluded that there is a bad faith intention for the registration of the mark bearing the mind the trade relations between the trademark owner and the Irish Dairy Board and the possibility for consumer deception.