The distinctiveness of geographical terms under EU trademark law

Article 7 of the European Union trade mark Regulation (EUTMR)¹ establishes the absolute grounds for refusal of EU trademark applications (EUTM). One of these grounds, provided for in paragraph 1 (c), is the lack of distinctive character due to descriptiveness. Applications shall be refused to “trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service.”

On first look it could appear that any trademark consisting exclusively of a geographical term could not be the object of an EUTM. However, this is not the case. Trademarks consisting exclusively of the names of municipalities or even cities are often granted registration by the European Union Intellectual Property Office, if certain requirements are met.

The geographical terms and their distinction from designations of origin and geographical indications

A geographical term can be the name of a country, a region, a city, a lake or a river, or of the corresponding adjectives, for example, Portugal, Lisbon, Tagus, and Portuguese.

It is worth noting that this ground for refusal is different from that laid down in paragraph 1 (j), providing the refusal of “trade marks which are excluded from registration, pursuant to Union legislation or national law or to international agreements to which the Union or the Member State concerned is party, providing for protection of designations of origin and geographical indications”. For paragraph 1 (c) to be applicable there is no need for the geographical terms to be protected as designations of origin or as a geographical indication.

The rationale of this ground for refusal

According to the CJEU case-law, the norm of Article 7 (1) (c) has the purpose of safeguarding the public interest in signs that may serve to designate the geographical origin of goods or services remain available, because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer preferences²

The current criteria

The criteria that have been applied under EU trademark law is that geographical terms cannot be registered if they are famous or known for the category of goods concerned, and are, for that reason, associated with those goods or services in the mind of the relevant class of persons, or it is reasonable to assume that the terms may, in view of the relevant public, designate the geographical origin of the category of goods and/or services concerned.³

Since this absolute ground is descriptiveness, the assessment has to be made in relation to the goods and services covered by the application. The objection will apply only if the geographical term, in the perception of the relevant public, describes objective characteristics of the goods and services.

The EUIPO’s Guidelines for trademarks⁴ define that the descriptive character of the geographical term may relate to four different types of geographic relevance: a) the geography of production of the goods, b) the geography where the goods are conceived and designed,⁵ c) where the services are provided, and d) the place that influences consumer preferences (e.g. lifestyle) by eliciting a favorable response.⁶

The Guidelines provide also a two-step test for assessing the applicability of this absolute ground for refusal:

1. First step: the term is understood by the relevant public as a geographical name. For this ground to be applicable EUIPO must prove that the geographical term is known by the relevant public as designating a location. The registration of geographical names that are unknown to the relevant public or at least unknown as the designation of a geographical location, is possible. Since this must be analyzed through the perception of the relevant public, it is determined by taking as basis a reasonably well-informed consumer who has sufficient common knowledge but is not a specialist in geography.⁷

2. Second step: the term (a) designates a place associated with the goods and services or (b) may be reasonably assumed to designate the geographical origin of the goods and services.

The analysis here is done by determining whether the geographical term object of the application designates a place that is currently associated with the claimed goods or services in the mind of the relevant public or whether it is reasonable to assume that it will be associated with those goods or services in the future,⁸ or if such a name may, in the mind of the relevant public, indicate the place of origin of those of goods or services.⁹ When determining if that association exists, according to the case-law of the CJEU,¹⁰ it must be considered the degree of knowledge in relation to: a) the geographical term, b) the characteristics of the place designated by the term; and b) the category of goods or services.

Regarding places that are currently associated with the claimed goods or services, when a location is already famous or known in relation to the goods and services it cannot be registered.¹¹ The Guidelines provide the following examples: “‘Milano’ should be refused for clothing, ‘Frankfurt’ for financial services, ‘Islas Canarias’ for sightseeing, tour guide and excursion services and ‘Switzerland’ for banking services, cosmetic products, chocolate and watches.”

In relation to the application of the norm in the second situation, - when a place is not currently associated but a reasonable assumption can be made that a place will be associated with those goods or services in the future or that a name may, in the mind of the relevant public, designate the geographical origin of that category of goods or services - the Guidelines determine that the following should be considered by examiners:

• Widespread recognition and fame for the high quality of their goods and/or services. When a geography has this recognition and fame, it is not necessary to assess in detail the association between the place and each (category) of the goods and/or services. Signs consisting of such a term may be refused on the basis of being perceived as a reference to the quality of the goods and/or services, namely that linked with the geographical term.¹²
  
  
• Size of the geographical location in question. In principle, the name of a country will be associated with the relevant goods and/or services and the public will accordingly perceive a country name as an indication of the geographical origin of the goods and/or services. However, it is still necessary to assess whether the public may establish such a descriptive link between the sign and the goods and/or services.
  
  
• Nature of the place. Not only the size, but also the nature of the place must be considered. Characteristics such as its natural conditions, its typical or traditional industries are important factors to be taken into account.
  
  
• Market sectors. The common practices of certain market sectors shall also be considered. The Guidelines provide examples of the car or furniture industries, where it is said that it “is common to use place names without a real geographical connotation, for example to designate models or range of products.”

Another note to be highlighted is that it is not a requirement that the name of a place actually designates the true geographical origin of the goods. What matters is that the relevant public may perceive the contested sign as an indication of the origin of those goods.¹³ Additionally, the mere possibility that the goods and services can be produced, commercialized or provided in the place in question is not sufficient for a refusal to be raised.¹⁴

The Guidelines then conclude that “if it can be concluded that there is a particular relationship between the geographical place designated by the sign and the goods and/or services for which the protection is sought, the Office will raise an objection.” In summary, this is the criteria to be applied.

Examples

To finish, we can look at how these criteria have been put into practice on several occasions by EUIPO. The following is a list of trademarks consisting exclusively of geographical terms, which registration was granted, in some cases, and refused, in others. It is possible to find some contradictions in the decisions, for example, in those pertaining trademarks no. 018456791 – ROME and no. 018456791 – ROME, and no. 015852651 – LONDON and 019081639 – LONDON.

Refused:

011246238 – BRASIL, Classes 32 and 33.

016746414 – AUSTRALIA, Classes 12, 25, 28, 35 and 37.

W01069254 – MONACO, Classes 9, 16, 39, 41 and 43.

012189056 – PARIS, (partially refused).

015852651 – LONDON, Classes 6 and 11.

1580336 – MADRID, Classes 25 and 28

007398217 – MADRID, Class 31

1690083 – FRANCE, Candles.

018456791 – ROME, Classes 9, 35 and 41

Granted:

W01071621 – ROME, Classes 9 and 41

W01231756 – Brasil, Classes 10, 28 and 41

019081639 – LONDON, Class 11.

017925380 – LISBON, Class 11.

018574057 – LISBON, Class 42.

009248972 – PARIS, Class 12

009418211 – PARIS, Classes

9, 36, 42, 45.

010419729 – MIAMI, Class 25.

31450 - HOLLYWOOD, for class 30,

W01767550 – HOLLYWOOD, 11

001022474 – GREENLAND, for fresh fruits and vegetables,

001749936 – DENVER, for lighting equipment,

003664133 - PORT LOUIS, in Classes 18, 24 and 25.

João Pereira Cabral is a Legal Manager at Inventa. He can be contacted at jcabral@inventa.com

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^{1 Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017, on the European Union trade mark.
2 See cases 15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 47; 25/10/2005, T-379/03, Cloppenburg, EU:T:2005:373, § 33.
3 See 15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 48; 25/10/2005, T-379/03, Cloppenburg, EU:T:2005:373, § 34
4 Accessible at https://guidelines.euipo.europa.eu/2214311/2226661/trade-mark-guidelines/2-6-2-assessment-of-geographical-terms .
5 See case 06/09/2018, C-488/16 P, NEUSCHWANSTEIN, EU:C:2018:673, § 48.
6 See 15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 47; 25/10/2005, T-379/03, Cloppenburg, EU:T:2005:373, § 33.
7 The Guidelines, 2.6.2 Assessment of geographical terms.
8 See 04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 31.
9 See 15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 48; T-379/03, Cloppenburg, EU:T:2005:373, § 34.
10 See 04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 32, 37; T-379/03, Cloppenburg, EU:T:2005:373, § 38.
11 See 15/10/2003, T-295/01, Oldenburger, EU:T:2003:267, § 31.
12 See 15/12/2011, T-377/09, Passionately Swiss, EU:T:2011:753, § 43-45.
13 See 15/10/2003, T-295/01, Oldenburger, EU:T:2003:267, § 43.
14 See 08/07/2009, T-226/08, Alaska, EU:T:2009:257.}