by Christoph Vischer, Rechtsanwalt und Partner bei Weickmann & Weickmann
Descriptive indications cannot actually be registered as trademarks. This also applies to designations that refer to the geographical origin of the product, such as city names. In the interest of the general public, terms which are required for the proper marketing of goods or services ought not to be monopolized by a trademark registration. Nevertheless, geographical indications can, under certain conditions, be protected as a trademark for a company. This is shown by the judgement of the Court of Justice of the European Union of 25 October 2018 in the trademark dispute between the mineral water producer DEVIN and the European Union Intellectual Property Office (Case T-122/17). There are exceptions that can justify trademark protection, explains Christoph Vischer.
In January 2011, the Bulgarian company Devin AD obtained registration of the European Union trademark "DEVIN" for non-alcoholic beverages, in particular mineral water. The local Bulgarian Chamber of Commerce and Industry of Haskovo filed an application for a declaration of invalidity against this trademark registration, which was allowed by the European Union Intellectual Property Office. The legal action filed by Devin AD against that application was successful in so far as the Court of Justice of the European Union annulled the decision of the Office and the trademark thus remained registered.
The Office took the view that the town of Devin was known to the general public in Bulgaria and at least to a significant proportion of consumers in neighbouring countries such as Greece and Romania, in particular as an important thermal spa, and that the name of that town was associated with mineral waters. The trademark "DEVIN" had to be cancelled because it indicates the geographical origin of the trade mark proprietor's products.
The Luxembourg judges disagreed. The relevant average foreign consumers in the European Union, in particular in Greece and Romania, do not know the small Bulgarian town of Devin, with a population of approximately 7000 inhabitants. Said public would not establish a direct link with this city. The fact that the city has a well-developed tourist infrastructure and a tourist profile on the internet does not alter that. With regard to consumers in Bulgaria, the peculiarity was that the name "DEVIN" was already known there as a trademark for mineral water. Although the Bulgarian consumer may recognise a geographical name in the word "DEVIN", the fact that the mark had acquired distinctive character in Bulgaria as a result of its reputation precluded its cancellation (ground for exclusion under Article 7(3) of the Trade Mark Regulation). The Court also considers that the general interest is safeguarded, since the descriptive use of the designation "DEVIN" remains permissible, for example to promote tourism in this city.
The principle therefore remains that geographical indications cannot be registered as trademarks. However, the judgement confirms that the examination must not be too rigorous. Not every geographical indication is excluded from registration as a trademark. This is also shown by the well-known European Union trademarks VITTEL and EVIAN.
This is good news for manufacturers who use geographical names for their products. Under certain conditions they can protect their trademarks throughout Europe; the tourist commercialization of the place does not normally stand in the way of this.
Christoph Vischer, LL.M. (Univ. of Auckland, NZ) patent attorney, partner Weickmann & Weickmann Patent- und Rechtsanwälte PartmbB, Munich
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