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Wednesday, 13 December 2006


The IPKat brings news of a slightly puzzling OHIM Second Board decision.

Pernod Ricard applied to register a figurative mark, consisting of the word MONTANA and a depiction of a mountain range, as a CTM for alcoholic beverages in Class 33. The application was refused, since MONTANA is the name of an American state, and as such was directly geographically descriptive of the origin of the goods. As a result, it would not be viewed as being distinctive. Moreover, the graphical element was banal, and did not turn the mark into a distinctive mark. Pernod Ricard appealed.

The examiner’s decision was annulled.

Although Montana is the name of a North American state near the Canadian border, it is not a wine-producing region, and in fact only has three wineries, compared to California’s 850 and, as such, figures very low down in the ranking of wine-producing US states.

Consequently, bearing in mind Montana’s lack of reputation for wine, and the fact that the low level of wine production meant that it was unlikely that wine from Montana would enter the market, it was unlikely that consumers would mentally associate the applied-for mark with wine from Montana. Moreover, the figurative element of the mark imbued it with the minimal degree of distinctiveness necessary for registration and it did not strengthen the reference to Montana the state, since the state is known as much for its Great Plains as its mountains. It was not banal, since mountains could be represented in many different ways. As a result, the mark was distinctive.

The mark was not descriptive since the figurative element prevented it from consisting ‘exclusively’ of a sign which may serve in trade to designate the geographical origin of the goods.

The IPKat reckons that the Board is imputing a large degree of knowledge about American wine-making to the average consumer. Moreover, the fact that Montana doesn’t currently produce much wine doesn’t mean that it won’t produce more in the future. This is the type of consideration that should be taken into account under the need to keep free for descriptiveness purposes.


Anonymous said...

Interesting to contrast this with UK practice. Not relevant what average consumers know about wines - the question is would other traders want to use (under a descriptiveness objection).

The Board make it reasonably clear they would take MONTANA (word only). The device (not the picture in the blog) simply adds to the overall impression and means that the mark is not exclusively descriptive.

I can go along with the decision. You can take the 'futurity' argument too far - if the area doesn't produce much wine now, it's not likely to in the future !

Jeremy said...

I think futurity has particular mileage when it comes to wine. 50 years ago England had no wine industry to speak of. You might say it was the Montana of the European wine sector. Now, with global warming and better viticulture, it's thriving.

Anonymous said...

So global warming has its advantages ! All I'd say it is a rather difficult concept to deploy to reject an otherwise perfectly registrable mark.

You can overdo it, and if you do deploy it then there does need to be an objective basis for playing the futurity card. I personally don't believe global warming would suffice here !

Jeremy, you'd have made a very good trade mark examiner (under the 1938 Act, when we refused everything !).

Anonymous said...

The trade mark could have had something to do with Pernod's very well known New Zealand brand of wine, Montana.

It's not clear to me quite why they wanted to risk an association with the US State by using its nickname as part of the mark.

David said...

It may not be a state famous for wines (yet), but is famous (at least among Zappa fans) for its dental floss farming industry.

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