For Emmentaler Switzerland, the international registration of the word mark EMMENTALER for “cheese with the protected designation of origin ‘Emmentaler'” was carried out at the International Office of the World Intellectual Property Organization.
This international registration was notified to the European Intellectual Property Office (EUIPO), but the examiner rejected the application. Emmentaler Switzerland therefore lodged an appeal, which was then rejected by the Second Board of Appeal on the grounds that the mark applied for was descriptive.
With its judgment, the General Court dismisses the action brought against the decision of the Board of Appeal. In this case, it examines whether the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001 by considering the mark applied for to be descriptive. The General Court also clarifies the interplay between Article 74(2) of that regulation, which is devoted to descriptive signs or indications that can be described as collective marks, and Article 7(1)(c) of the regulation, which concerns descriptive marks.
appreciation by the court
As regards, first, the descriptive character of the mark applied for, the General Court takes the view, in the light of the evidence considered by the Board of Appeal, that the relevant German public understands the sign EMMENTALER directly as a designation for a type of cheese. Since it is sufficient for refusal to register a sign that that sign is descriptive in one part of the Union, which may consist of a single Member State, the Board of Appeal rightly concluded that the mark applied for is descriptive, without it being necessary to examine aspects that do not concern the perception of the relevant German public.
Secondly, as regards the protection of the mark applied for as a collective mark, the Court points out that collective marks pursuant to Article 74(2) of Regulation 2017/1001, in derogation of Article 7(1)(c) of that regulation, consist of signs or indications which can be used in trade to indicate the geographical origin of the goods or services in question. However, this exception is to be interpreted narrowly. Their scope does not therefore include signs which are to be regarded as an indication of the type, quality, quantity, destination, value, time of manufacture or any other characteristic of the goods in question, but only signs which serve as an indication of the geographical origin of those goods. Since the trademark applied for describes a type of cheese for the relevant German public and is not perceived as an indication of geographical origin for the cheese in question, the court comes to the conclusion that it enjoys no protection as a collective trademark.
Source: PRESS RELEASE No. 84/23 Court of Justice of the European Union
Tipp: Do you have any questions about the contribution? Feel free to discuss this with us in the
Entrepreneur group of the IT law firm on Facebook.