Trade marks: registrability of geographical names and descriptive terms

Background

Marks that are devoid of any distinctive character are not registrable and if registered may be revoked for invalidity.

Marks that consist exclusively of signs or indications which may serve to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or services, or other characteristics of the goods or services (descriptive marks) are not registrable and if registered may be revoked for invalidity (Article 3(1)(c), Trade Mark Directive (2015/2436/EU)) (the Directive) (Article 3(1)(c)). Article 3(1)(c) does not explicitly refer to means of production.

Article 102 of Regulation 1308/2013/EU (Article 102) provides grounds for refusal of registration of a trade mark that contains or consists of a protected designation of origin or a geographic indication, including indications  designating the means of production of goods.

"Adega" means "cellar" in Portuguese.

"Borba" is a geographical region in Portugal.

Facts

A had registered the trade mark ADEGABORBA.PT for wine products in Portugal.

J brought an application for cancellation.

The Portuguese Court referred questions to the ECJ including whether the term "adega" should be considered purely descriptive when used in the field of wine-making as it refers to a means of production, or if it referred to a mere characteristic of those goods, in addition to those set out in the Directive.

Decision

The court ruled that Article 3(1)(c) must be interpreted as meaning that the registration of a trade mark consisting of a word sign designating wine products and including a geographical name must be refused where that sign contains a term commonly used to designate facilities or sites in which those products are produced and is also one of the word elements of the business name of the legal entity seeking to register that name.

All the terms listed in Article 3(1)(c) must be regarded as characteristics of goods or services, and the list was not exhaustive. The word "characteristic" means that the signs referred to in the provision are merely those that serve to designate a property, easily recognisable by the relevant class of persons, of the goods or services. So, a sign could be refused registration on the basis of Article 3(1)(c) if it was reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics.

"Adega" has two meanings in Portuguese: underground premises in which wine is kept; or premises in which wine products are produced. The relevant class of people would perceive the term "adega" as a reference to a facility in which wine was produced and stored, and therefore as a reference to properties of those goods. The term must therefore be regarded as descriptive of the goods it designated. The word "Borba" was a geographical name, relating to the origin of the goods, so also descriptive of the goods. So, the sign composed of the two-word elements was descriptive and therefore was devoid of distinctive character.

The fact that such a geographical name might constitute a protected designation of origin under Article 102 was not capable of calling the court's interpretation into question as it was clear from Article 102 that such a designation could not be registered as a commercial trade mark.

It was irrelevant that the term used to designate a place of production of goods or a facility in which the goods were produced was part of the corporate name of a legal person.

Comment

This decision helpfully clarifies that the list of characteristics of goods or services in Article 3(1)(c) is not exhaustive.

Case: J Portugal Ramos Vinhos SA v Adega Cooperativa de Borba CRL C-629/17.

First published in the January/February 2019 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.