When does Irish origin matter for trademark protection in the EU?

The General Court of the European Union has ruled in the case T-306/20 – Hijos de Moisés Rodriguez Gonzàlez SA v EUIPO, Ireland and Ornua Co-operative Ltd. The case has the following background:

In 2013, the Spanish company Hijos de Moisés Rodriguez Gonzàlez SA filed an EU trademark for the following figurative sign:

On 3 January 2014, the mark applied for was registered in respect of the following 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.

On 7 January 2015, Ireland and the intervener, Ornua Co-operative (previously known as Irish Dairy Board Co-operative Ltd), filed an application for a declaration that the contested mark was invalid in respect of all the goods above.

In the application for a declaration of invalidity it was claimed that the mark was deceptive under the provisions of Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(g) of that regulation (now Article 59(1)(a) and Article 7(1)(g) of Regulation 2017/1001), and that the registration of that mark had been applied for in bad faith for the purposes of Article 52(1)(b) of that regulation (now Article 59(1)(b) of Regulation 2017/1001).

By decision of 15 June 2016, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. It found that Article 7(1)(g) of Regulation No 207/2009 was not applicable, because it had to be established that the contested mark was deceptive at the time it was filed. The Cancellation Division took the view that, in the case before it, any possible deception resulted from the use of that mark after the end of the commercial agreement which had been entered into by the applicant and the intervener and which was in force from 1967 to 2011. It found that that situation was specifically covered by the ground for revocation laid down in Article 51(1)(c) of Regulation No 207/2009 (now Article 58(1)(c) of Regulation 2017/1001). The Cancellation Division also rejected the argument raised under Article 52(1)(b) of that regulation, finding that no conclusion regarding bad faith could be drawn from the fact that the contested mark had been filed after the termination of the business relationship with the intervener.

On 12 August 2016, Ireland and the intervener filed a notice of appeal with EUIPO against the Cancellation Division’s decision.

By decision of 6 December 2017, the Presidium of the Boards of Appeal referred the case to the Grand Board of Appeal.

By the contested decision, the Grand Board of Appeal of EUIPO found that, at the time when the application for registration was filed, the contested mark was used in a deceptive manner. It also found that the registration of that mark had been applied for in bad faith. Consequently, it annulled the Cancellation Division’s decision and declared the contested mark invalid.

According to the Board, consumers could believe that the goods originate from Ireland which could not be the case.

The decision was applied before the General Court.

The Court annulled the first part of the Board’s decision stating that the ground of deceptiveness should have to be evaluated at the time when the trademark application was filed.

Nevertheless, the invalidation was confirmed because the Court found that the mark was filed in bad faith.

The reason for this was that the Parties, in this case, had long-lasting trade relationships, where the Spanish company had been importing Irish butter under this mark. After the end of their partnership, the above trademark was filed, which could take advantage of the associations with the Irish origin of the goods. That is to say, consumers can believe that the goods under the same mark are still from Ireland which can not be the case.

According to the Court:

In the present case, in the first place, as regards the misleading use of the contested mark, it is common ground between the parties that: (i) for decades, the applicant sold butter of Irish origin under that mark in the context of its contractual relationship with the intervener; (ii) after that relationship came to an end, it continued to sell foodstuffs under that mark; and (iii) a not insignificant part of those foodstuffs, including dairy products and pork products, was not of Irish origin. In any event, the applicant has not claimed that all the goods which it sold under the contested mark originated in Ireland.

In other words, the applicant sold goods under the contested mark even though a not insignificant part of those goods was not of Irish origin and therefore did not correspond to the relevant public’s perception of those goods.

Once the applicant had extended the use of the contested mark to goods other than butter of Irish origin, Spanish-speaking consumers, who constitute the relevant public, were likely to be misled as to the geographical origin of those goods, since they had become accustomed over the course of several decades to the contested mark being affixed to butter originating from Ireland. Such conduct is evidence of bad faith inasmuch as it shows that, when filing the application for the contested mark, the applicant intended unfairly to transfer the advantage derived from the association with Ireland to goods not having that geographical origin, in particular after the end of its business relationship with the intervener which supplied it with Irish butter.

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