AG Kokott provides insights on distinctive character of geographical collective trade marks and their interplay with GIs

Earlier this month, Advocate General (AG) Kokott handed down her Opinion in T-766/18 P, providing some indications regarding the distinctive character of collective and geographical collective trade marks and their interplay with geographical indications (GIs). 

Background

On 17 July 2014, the Commission received the official application for the registration of the names ‘Χαλλουμι’ (Halloumi)/‘Hellim’ as a Protected Designation of Origin (PDO) under the Quality Regulation (EU) No 1151/2012. The procedure for establishing a PDO has not yet been concluded. Cyprus and other bodies, such as the Foundation for the protection of the Traditional Cheese of Cyprus named Halloumi (hereinafter, the Foundation), not having yet obtained the PDO have tried to prevent the use of the designation Halloumi registering it as a trade mark. 

In the context of the opposition against the registration of the colour figurative mark BBQLOUMI, the European Union Intellectual Property office (EUIPO) and the General Court (GC) have held that the HALLOUMI trademark has a low distinctive character. Hence the opposition was rejected both before the EUIPO and the GC.

The trade mark opposed 

Analysis

In the appeal procedure before the Court of Justice of the European Union (CJEU), AG Kokott recalled that, according to the Trade Mark Regulation, it is possible to register both collective trade marks and, as an exception to article 7(1)(c), geographical collective trade marks. In particular the first and second paragraph of article 66 of the Regulation state: 

1. A Community collective mark shall be a Community trade mark which is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings. Associations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued, as well as legal persons governed by public law, may apply for Community collective marks.
2. In derogation from Article 7(1)(c), signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute Community collective marks within the meaning of paragraph 1. A collective mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided he uses them in accordance with honest practices in industrial or commercial matters; in particular, such a mark may not be invoked against a third party who is entitled to use a geographical name. 

Collective mark

AG Kokott recalled the essential function of a collective mark, that is to guarantee the collective commercial origin of goods and services. Because of the function of trade marks, the registration of a collective mark, just like the registration of other marks, presupposes its distinctive character. At the same time, the simple fact that a collective mark has been registered does not allow to presume that a collective mark enjoys particular distinctive character. 

Geographical collective mark

According to the AG, it is more difficult to answer to the question whether the distinctive character of geographical marks should also be assessed according to general criteria.

She recalled the DARJEELING case (C‑673/15 P to C‑676/15 P (DARJEELING being the name of a city and a district in India and a well-known black tea which is grown there) as the most important judgment concerning geographical collective marks so far. Even if the AG considered that the Foundation’s claim regarding the geographical collective mark would be inadmissible, she analysesd the substance of Article 66(2) of the Regulation: 

The AG described the provision as being a “foreign body” in trade mark law because the regulation intends to keep descriptive terms free. Morevoer recalled that the consumer considers descriptive terms as a description of the characteristics of the products and not as the indication of its origin while geographical indication may be perceived as indication of geographic origin or a descriptions related to a particular place.

The AG underlined that geographical collective marks exclusively guarantee a particular geographical origin of the goods or services concerned and they cannot be considered as having increased distinctive character as a matter of course. Otherwise, the distinctive character would remain notional as the public would still not perceive the geographical indication as an indication of the collective commercial origin of the product. 

Geographical collective trade marks, PDOs and protected GIs

According to the AG, the HALLOUMI mark gives rise to the identification of the goods or services concerned at most to a low degree. This consideration is not affected by the risk of limiting the effectiveness of Article 66(2) of the Regulation and the protection of geographical collective marks as the proprietors of a geographical collective mark still enjoy minimum protection. The AG also noted that the proprietor can influence the perception of the mark if they use it in such a way that it acquires distinctive character. 

The protection given to this kind of trade marks does not need to be more extensive as the rules governing protected designations of origin and protected geographical indications can provide sufficient protection outside the scope of trade mark law. Under Article 12(1) of Regulation No 1151/2012 PDOs and protected GIs may be used by any operator marketing a product conforming to the corresponding specification without the need of being member of an association. 

Comment

The Opinion defines the function of geographical collective trade marks and the assessment of their distinctive character. At the same time, in light of the presence of legislation regarding PDOs and protected GIs, it limits the scope of protection of these trade marks somehow trying to avoid the use of the trade marks system to cope for the lack of a protected designation of origin. Let's now see what the CJEU thinks.