Turkish cheese sticks cannot be a 3D trademark in the EU

music-1262026_960_720The General Court of the European Union has ruled in case T‑572/19,  Muratbey Gida Sanayi ve Ticaret AŞ v EUIPO. It concerns an attempt for registration of the following EU 3D trademark for the shape of cheese sticks in class 29 – milk products:

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The EUIPO refused the registration with the argument that it is not distinctive. The Turkish applicant claimed that the shape was novel, original and unique, offered in the market for the first time by him. Because of this the company won a World Dairy Innovation Award 2018.

The Court disagreed. Novelty and originality are not criteria for assessment of the distinctive character of a sign. The award could be a factor but only if it was based on a consumer perception.

According to the Court, other producers were offering similar products too because of which the shape of this cheese is not distinctive enough to be registered as a trademark.

Source: WIPR.

To what extent can you protect cheese using trademarks?

feta-1464873_960_720.jpgThe Advocate General of the European Court J. KOKOTT has issued her opinion on case C‑766/18 P, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO. The case concerns the following:

On 9 July 2014, M. J. Dairies EOOD filed an application with EUIPO for registration of the colour figurative mark reproduced below:

The goods and services for which registration was sought are in Classes 29, 30 and 43, for certain foodstuffs, including cheese, and certain catering services.

The Foundation is the proprietor of the collective word mark HALLOUMI, which was registered by EUIPO on 14 July 2000 under number 1082965 for goods in Class 29 with the description ‘cheese’. On 12 November 2014, it filed a notice of opposition against the application, relying in particular on a likelihood of confusion within the meaning of Article 8(1)(b) of the Trade Mark Regulation.

The Opposition Division rejected the opposition and the appeal filed against its decision was also unsuccessful. Finally, by the judgment under appeal of 25 September 2018, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO — M. J. Dairies (BBQLOUMI) (T‑328/17, not published, EU:T:2018:594), the General Court also dismissed the action brought against the decision made by the Board of Appeal.

The Advocate dismissed the Foundation’s appeal with the following arguments:

At the hearing, EUIPO thus rightly argued that preferential status under Article 66(2) of the Trade Mark Regulation has a similar effect to the registration of a descriptive mark in accordance with the previously mentioned judgment in Formula One Licensing v OHIM. Such a mark is accorded the necessary minimum degree of distinctive character to justify its registration, but not necessarily increased distinctive character.

The General Court does not find otherwise when, in paragraph 71 of the judgment under appeal, it acknowledges the HALLOUMI mark as having only a minimum degree of distinctive character and thus rejects a likelihood of confusion.

In paragraphs 50 to 53 and 70 of the judgment under appeal, it expressly held that the HALLOUMI mark is not perceived as a designation of (individual or collective) commercial origin, but as a designation of a speciality cheese. The description of certain goods is not, however, accorded preferential status by Article 66(2) of the Trade Mark Regulation, even though the public might associate them with a particular geographical origin. Moreover, the assessment of the perception of a mark is a factual assessment and thus falls outside the scope of the review by the Court of Justice in appeal proceedings.

Thus, the distinctive character of a geographical collective mark is also to be assessed according to the extent to which it identifies the collective commercial origin of the goods or services concerned.

As has already been explained, however, according to the factual findings made by the General Court, the HALLOUMI mark gives rise to such identification at most to a low degree. Consequently, the General Court’s reasoning regarding the distinctive character of the HALLOUMI mark and the likelihood of confusion, and in particular paragraphs 41 and 71 of the judgment under appeal, in which the General Court acknowledges the HALLOUMI mark as having only a minimum degree of distinctive character which is not sufficient to give rise to a likelihood of confusion with the mark at issue, is not vitiated by an error in law.

Nor is this conclusion called into question by the fact that it significantly restricts the effectiveness of Article 66(2) of the Trade Mark Regulation and the protection of geographical collective marks. The proprietors of a geographical collective mark still enjoy minimum protection, permitting them to prevent registration of identical marks for the same products. At the same time, they can influence the perception of the mark if they use it in such a way that it acquires distinctive character.

Ultimately, there is also no need for more extensive protection because the rules governing protected designations of origin and protected geographical indications can provide sufficient protection outside the scope of trademark law. Those rules have the additional benefit, compared with the geographical collective mark, that under Article 12(1) of Regulation No 1151/2012 protected designations of origin and protected geographical indications may be used by any operator marketing a product conforming to the corresponding specification. Membership of an association, as provided for in Article 67(2) of the Trade Mark Regulation, is unnecessary in this regard. Furthermore, EUIPO rightly asserts that it would be contradictory if producers’ associations could obtain equivalent or even stronger protection for geographical designations on the basis of trademark law than in the protected designation of origin system.

Whether Don Quijote de la Mancha relates to a PDO cheese?

pexels-photo-220112.jpegThe European Court has ruled in case C‑614/17 Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego v Industrial Quesera Cuquerella SL. This interesting case regards the issue of whether a geographical indication can be infringed by a graphical representation that can be related to it. In detail:

The Queso Manchego Foundation is responsible for managing and protecting the PDO ‘queso manchego’. On that basis, it brought an action against the defendants in the main proceedings before the Spanish court of first instance with jurisdiction to hear the case seeking a declaration that the labels used by IQC to identify and market the cheeses ‘Adarga de Oro’, ‘Super Rocinante’ and ‘Rocinante’, which are not covered by the PDO ‘queso manchego’, and the use of the words ‘Quesos Rocinante’ infringe the PDO ‘queso manchego’ because those labels and those words constitute an unlawful evocation of that PDO for the purpose of Article 13(1)(b) of Regulation No 510/2006.

The Spanish court of first instance dismissed that action on the ground that the signs and names used by IQC to market the cheeses which were not covered by the PDO ‘queso manchego’ were not visually or phonetically similar to the PDOs ‘queso manchego’ or ‘La Mancha’ and that the use of signs such as the name ‘Rocinante’ or the image of the literary character Don Quixote de La Mancha evoke the region of La Mancha (Spain) and not the cheese covered by the PDO ‘queso manchego’.

The Queso Manchego Foundation brought an appeal against that decision before the Audiencia Provincial de Albacete (Provincial Court, Albacete, Spain), which, by judgment of 28 October 2014, upheld the judgment at first instance. That court held that, for cheeses marketed by IQC which are not covered by the PDO ‘queso manchego’, the use of landscape and images typical of La Mancha on the labels of those cheeses leads consumers to think of the region of La Mancha but not necessarily of the cheese covered by the PDO ‘queso manchego’.

The applicant in the main proceedings brought an appeal against that judgment before the Tribunal Supremo (Supreme Court, Spain).

In its order for reference, the Tribunal Supremo (Supreme Court) sets out a number of factual considerations.

First of all, the referring court states that the word ‘manchego’ used in the PDO ‘queso manchego’ is the adjective which describes, in Spanish, the people and the products originating in the region of La Mancha. Next, it observes that the PDO ‘queso manchego’ covers cheeses made in the region of La Mancha from sheep’s milk in accordance with the traditional production, preparation and ageing requirements set out in the product specification of that PDO.

Moreover, the referring court states that Miguel de Cervantes set most of the story relating to the fictional character Don Quixote de La Mancha in the region of La Mancha. Don Quixote is also described by the referring court as having certain physical features and clothing similar to those of the character depicted on the figurative design on the label of the cheese ‘Adarga de Oro’. In that regard, the archaic word ‘adarga’ (small leather shield) is used in [Cervantes’] novel to describe the shield used by Don Quixote. In addition, the referring court notes that one of the names used by IQC for some of its cheeses is the name of the horse ridden by Don Quixote de La Mancha, namely ‘Rocinante’. The windmills which Don Quixote fights are a typical feature of the landscape of La Mancha. Landscapes featuring windmills and sheep appear on some of the labels used for the cheeses produced by IQC which are not covered by the PDO ‘queso manchego’ and in some of the illustrations on IQC’s website, which also advertises cheeses not covered by the PDO.

In those circumstances, the Tribunal Supremo (Supreme Court) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Must the evocation of a [PDO], prohibited by Article 13(1)(b) of Regulation No 510/2006 necessarily be brought about by the use of a name visually, phonetically or conceptually similar to the [PDO] or may it be brought about by the use of figurative signs evoking the [PDO]?

(2)  When the [PDO] is of a geographical nature (Article 2(1)(a) of Regulation No 510/2006) and when the products are the same or comparable, can the use of signs evoking the region with which a [PDO] is associated constitute evocation of the [PDO] itself, within the meaning of Article 13(1)(b) of Regulation No 510/2006, which is prohibited even when the user of those signs is a producer established in the region associated with the [PDO], but whose products are not protected by [that PDO] because they do not meet the requirements set out in the product specification, apart from the geographical provenance?

(3)  Must the concept of the average consumer who is reasonably well informed and reasonably observant and circumspect, to whose perception the national court has to refer in order to assess whether there is “evocation” within the meaning of Article 13(1)(b) of Regulation No 510/2006, be understood to cover European consumers or can it cover only consumers of the Member State in which the product giving rise to evocation of the protected geographical indication is produced or with which the PDO is geographically associated and in which the product is mainly consumed?’

The Court’s decision:

1.  Article 13(1)(b) of Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs must be interpreted as meaning that a registered name may be evoked through the use of figurative signs.

2. Article 13(1)(b) of Regulation No 510/2006 must be interpreted as meaning that the use of figurative signs evoking the geographical area with which a designation of origin, as referred to in Article 2(1)(a) of that regulation, is associated may constitute evocation of that designation, including where such figurative signs are used by a producer established in that region, but whose products, similar or comparable to those protected by the designation of origin, are not covered by it.

3.  The concept of the average consumer who is reasonably well informed and reasonably observant and circumspect, to whose perception the national court has to refer in order to assess whether there is ‘evocation’ within the meaning of Article 13(1)(b) of Regulation No 510/2006, must be understood as covering European consumers, including consumers of the Member State in which the product giving rise to evocation of the protected name is made or with which that name is geographically associated and in which the product is mainly consumed.