DAIRY MARK LOOKS TOO MUCH LIKE A GEOGRAPHICAL INDICATION, COURT RULES

In Case T-295/01 Nordmilch eG v Office for Harmonisation in the Internal Market (Trade Marks and Design) (Court of First Instance of the European Communities, 15 October 2003) Nordmilch applied unsuccessfully to register the word OLDENBURGER as a Community trade mark for goods in classes 29, 30 and 32 (various milk and dairy, ice cream and confectionery products and drinks). The OHIM Board of Appeal dismissed Nordmilch’s appeal since OLDENBURGER could serve as an indication of geographical origin for a German region which produced those goods and there was a public interest in that word remaining freely available. Nordmilch then appealed to the Court of First Instance, which dismissed the appeal.

The court recited Article 7(1)(c) of the CTM Regulation, which provides that trade marks consisting exclusively of signs indicating geographical origin were not to be registered. That aim was in the public interest, in that descriptive signs and indications relating to the categories of goods or services in respect of which registration was applied for might be freely used by all. Article 7(1)(c) did not however preclude the registration of geographical names which were unknown to the relevant class of persons or of names in respect of which such persons were unlikely to believe that the category of goods concerned originated there. In this case, since Germans who well knew that Oldenburg was the capital of a dairy region might perceive OLDENBURGER as an indication of the geographical origin of those goods. The court noted that the purpose of Article 12(b) of the same regulation was to ensure, inter alia, that use of an indication relating to geographical origin which also formed part of a complex trade mark was allowed if it was used in accordance with honest practices in industrial and commercial matters. If Article 12(b) were to apply there had, therefore, to be a prior finding that a trade mark had been validly registered. In this case, as the applicant’s mark had not been registrable, Article 12(b) of the regulation was inapplicable.

The IPKat welcomes this decision. Unless they have achieved such a high degree of secondary meaning that they are no longer viewed as place names, signs which masquerade as protected geographical indications perform no valuable market function and merely get in the way of honest commercial trade.

What else is Oldenburg known for? Horses, pop sculpture, science networking, tourism and immaculate conception
Dairy recipes here, here and here