From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Thursday, 15 January 2015

Monaco "devoid of distinctive character", rules EU court

Monegasque stamps
take some licking ...
Judgment was delivered today by the General Court in Case T-197/13 Monaco v OHIM (not yet available in English, though you can enjoy it in Maltese, Croatian or Estonian if you like). The result must have disappointed the brand-sensitive denizens of the sunny, cash-bound Principality, whose devotion to the exclusive use of the Monaco-based geographical location "Monte Carlo" has been ridiculed in this weblog here and here. Anyway, in the absence of an authentic English text, this Kat brings you the Curia media release (it's not that often these days that a mere General Court IP decision will get the full Curia media release treatment), with a few additions and comments of his own:
The Principality of Monaco cannot benefit from the protection of the trade mark MONACO in the EU in respect of certain goods and services
The word ‘MONACO’ designates the origin or geographical destination of the goods and services concerned and is devoid of distinctive character 
In 2010, the government of the Principality of Monaco was granted, by the World Intellectual Property Organisation (WIPO), an international registration covering the territory of the EU. That registration, which was based on the word mark MONACO, was transferred to the Office for Harmonisation in the Internal Market (OHIM) to be processed.

In 2013, OHIM refused protection of the trade mark in the EU in respect of some of the goods and services applied for [these turn out to be "magnetic data carriers, paper and cardboard goods not included in other classes, printed matter, photographs, transport, travel arrangement, entertainment, sporting activities and temporary accommodation"]. OHIM based its refusal on the descriptive character of the mark, in so far as the word ‘monaco’ designated the territory of the same name and could, therefore, be understood in any of the EU’s official languages as designating the origin or geographical destination of the goods and services concerned. OHIM further considered that the mark at issue was clearly devoid of distinctive character. Les Marques de l’État de Monaco (MEM), a Monegasque public-limited company which succeeded the government of the Principality of Monaco as the proprietor of the trade mark, contests OHIM’s decision before the General Court and seeks the annulment of that decision.

By today’s judgment, the General Court dismisses the application and upholds OHIM’s decision.

The General Court points out, first of all, that under EU law [ie the  Community Trade Mark Regulation], any legal entity, including a public law entity, may apply to benefit from the protection of the Community trade mark. This is, of course, true for companies based in the territory of a State which is not a member of the EU, but also for the non-member States themselves, since those States are, within the meaning of EU law, public law entities. As a result, when the Principality of Monaco formulated its request to have the EU designated for the international registration of the trade mark at issue, it placed itself within the scope of application of EU law and, therefore, one of the absolute grounds for refusal could be relied upon against it. In other words, the Principality of Monaco sought to benefit from the application of EU law and, therefore, became subject to its rules, without being able to rely on its entitlement in principle to be the proprietor of the trade mark MONACO [quite right too, says Merpel, who is pleased to see that Monaco is subject to the application of EU law even if the European Patent Office isn't].

Monaco's legal team
prepare to appeal ...
Moreover, the General Court observes that the word ‘monaco’ corresponds to the name of a globally-known principality, not least due to the renown of its royal family, its organisation of a Formula 1 Grand Prix and its organisation of a circus festival. Knowledge of the Principality of Monaco is even more established amongst EU citizens, notably on account of its borders with a Member State (France), its proximity to another Member State (Italy) and its use of the same currency as 19 of the 28 Member States, the Euro. There is therefore no doubt that the word ‘monaco’ will evoke, regardless of the linguistic background of the relevant public, the geographic territory of the same name [er, no, says the IPKat: for some innocent souls the word 'monaco' evokes a sun-drenched stretch of Mediterranean coastline that goes by the confusingly similar name of Morocco]. In addition, the General Court notes that OHIM correctly defined the relevant public (namely citizens of the EU [Phew! Glad they didn't get that one wrong ...]) and correctly attributed to that public, in respect of the goods and services concerned, either an average or high degree of attentiveness. According to the General Court, OHIM was also correct to find that the word ‘monaco’ could be used, in trade, to designate origin, geographical destination or the place of supply of services, so that the trade mark has, in respect of the goods and services concerned, a descriptive character. Furthermore, as a descriptive mark is necessarily devoid of distinctive character, the General Court holds that the trade mark MONACO is devoid of distinctive character.
The IPKat is absolutely certain that this decision will be appealed to the Court of Justice.  The appellant is made of money (the words "money" and "monagesque" even share the first five letters), it doesn't even cost that much to appeal, and the odds on the Court of Justice slipping up and reversing this decision -- which looks pretty good even in Croatian -- are probably worth a gamble.


Anonymous said...

As he walks from court, in robes of red
And an independent air
You can hear the lawyers swear
That it really wasn’t fair
You can hear them sigh and wish he’d die
They would love to punch him in the eye
He’s the man who took the mark from Monte Carlo

Anonymous said...

5 letters?

And who attributes to the entire EU public "an average OR ABOVE AVERAGE degree of attentiveness". Surely, when the whole population is considered, nothing other than an average degree of attentiveness can be assumed!

Anonymous said...

I think it's a safe assumption that the average consumer has a higher degree of attentiveness than the average European. Those outliers with exceptional attentiveness will still consume, while those with exceptionally low attentiveness will tend to be sufficiently unsuccessful as to not have the funds to consume.

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