28/10/2015 - Recent rulings concerning TMs applications conflicting with GIs

Café de Colombia

On 18 September, the General Court of the EU ruled on case T-387/13 (“Federación Nacional de Cafeteros de Colombia” v. OHMI, the other party to the proceedings before the Board of Appeal of OHIM being Nadine Hélène Jeanne Hautrive) concerning the application for the Community figurative mark “COLOMBIANO HOUSE” for restaurant services (Class 43 in the Nice classification). It also ruled on case T-359/14 (“Federación Nacional de Cafeteros de Colombia” v. OHMI, the other party to the proceedings before the Board of Appeal of OHIM being Accelerate s.a.l., established in Beirut) concerning the invalidity proceedings for the Community figurative mark “COLOMBIANO COFFEE HOUSE” registered as well for restaurant services. The General Court held that PDO/PGI are protected in the EU not only with respect to trademarks subsequently applied for the same class of products or for comparable products. While not ex officio, trademarks conflicting with a PDO/PGI applied for non-comparable products (including services) should be denied registration if their use exploits the reputation of the PDO/PGI at issue. The Board of Appeal of OHIM will have to reconsider the 2 cases based on these principles, which by the way the same Office had correctly taken into account earlier this year in a similar case concerning the trademark application “Colombueno” (Class 43) also conflicting with the PGI “Café de Colombia”. 

More info @ Press Release 

 

 Darjeeling  

On 2 October, the General Court issued four judgments related to the community trademark application “Darjeeling” in classes 25, 35 and 38 (related to day and night lingerie). The Tea Board of India had opposed such application before the OHIM based on two earlier community trademarks covering goods in Class 30. In particular, it argued the likelihood of confusion with such trademarks and the reputation associated with the name “Darjeeling” (Article 8(1) and (5) of the Community Trade Mark Regulation - CTMR). The OHIM had rejected the opposition. The General Court, on the one hand, found that the OHIM was right in assessing the no-likelihood of confusion. On the other hand, though, it recognized that “Darjeeling” had an outstanding reputation as a tea of the highest quality and the use of the applied for trademarks would be detrimental to it. As a result, the General Court annulled the above-mentioned OHIM decision with respect to Class 25 as well as to Class 35. 

For more information, see the cases T-624/13, T 625/13, T-626/13 and T-627/13 

 

Basmati 

In September, the General Court ruled on the community trademark application “BASmALi” in Class 30 (long rice) annulling the decision of the OHIM Board of Appeal, which had rejected the opposition to such application and stated that the name “basmati” was a generic term. The General Court upheld the claim of the opponent who argued that the name “basmati” is distinctive as it identifies a specific type of rice with a reputation for its quality, fragrance and other properties. The opponent had also argued that the community trademark application “BASmALi” represented an infringement of Article 8(4) of the CTMR as it had acquired rights over the name “basmati” in accordance with UK law. 

For more information see the case T‑136/14 

 

 Prosecco  

In September, following the opposition by the “Consorzio di Tutela della DOC Prosecco”, the application for the Community trademark “T-Secco” (for classes 32 and 33 goods) was rejected. The Consorzio had based its opposition on the collective Community trademark PROSECCO PDO PROSECCO DOC and on the PDO PROSECCO. The Opposition Division of OHIM upheld the risk of a likelihood of confusion under Article 8(1)(b) of the CTMR, for all the goods that are identical, similar, and similar to a low degree (limited to class 32 and class 33, while the application for “T-Secco” was also for classes 30 and 43). The earlier PDO PROSECCO was not upheld as a valid ground for the opposition due to insufficient evidence of use of the sign in the course of trade (Art. 8(4) of the CTMR). 

For more details, see the Decision on Opposition No B 2 406 885   

 

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