“EMMENTALER” cannot be an EUTM, says the General Court

With a decision dated 24 May 2023, the General Court (GC) held that the term “EMMENTALER”, as designating a type of cheese, cannot be protected as European Union trade mark (EUTM), having a descriptive character in part of the European Union (EU), which may be a single Member State (in this case Germany).

The GC also confirmed that the trade mark applied for could not be protected as a collective mark, with the derogation provided by Art.  74(2) of Regulation 2017/1001 to Art. 7(1)(c) requiring a strict interpretation.

Background

On 14 October 2017, Emmentaler Switzerland - Consortium Emmentaler AOP (the Applicant) obtained the International Registration No 1378524 for the word sign “EMMENTALER” from the International Bureau of the World Intellectual Property Organization. Registration was sought for products in class 29, namely for cheeses with the protected designation of origin “EMMENTALER”.

On 7 December 2017, the international registration was notified to the European Intellectual Property Office (EUIPO). With decision of 9 September 2019 the examiner rejected the application for registration on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001 and Article 7(2) of the same regulation. The examiner found that the trade mark applied for was descriptive and not capable of designating the geographical origin of the goods.

On 25 October 2019, the applicant lodged an appeal against the examiner’s decision. With decision dated 12 February 2020 (R 2402/2019-2), the Board of Appeal dismissed the appeal on the basis of Article 7(1)(c) of Regulation 2017/1001, the sign being held descriptive.

The Applicant appealed to the General Court contesting the decision with regard to the descriptive character and to refusal of protection of the sign as a collective trade mark as well.

The General Court’s decision

a) Descriptive character

As regards the descriptive nature of the mark applied for, the GC held that the relevant German public immediately understands the sign “EMMENTALER” as designating a type of cheese. For the registration of a sign to be refused, it is sufficient that the sign has a descriptive character in part of the EU, which may be just a single Member State (in this case Germany).

In particular the GC recalled a) the definition of the word “EMMENTALER” by the Duden dictionary, b) the massive production and sale of “EMMENTALER” in Germany without any specific reference to the origin of the product, c) the German cheese regulation, d) the EU position during the negotiation of the Agreement between Switzerland and the EU, e) the general standard for Emmental drawn up by the Codex Alimentarius Commission, f) the judgment in C-448/98 stating that emmental cheese is lawfully manufactured and marketed in EU Member States other than France.

The GC therefore confirmed the decision of the Board of Appeal and held that the mark applied for is descriptive, without it being necessary to examine the elements which do not concern the perception of the relevant German public.

b) Refusal of protection as a collective trade mark

As regards to protection sought as collective trade mark, the GC stated that, by way of derogation from Article 7(1)(c) of Regulation 2017/1001, signs or indications that may be used to identify the geographical origin of the goods or services may constitute collective trade marks according Article 74(2) of that Regulation. This derogation has to be interpreted and applied strictly. Therefore, only signs that will be considered as being an indication of the geographical origin of goods will fall within the application of that derogation and enjoy protection as collective trade mark (see T-341/09). On the contrary, all signs that are regarded as an indication of the kind, quality, quantity, intended use, value, time of production, or other characteristic of the goods must be excluded from that protection. Therefore the Court concludes that it does not enjoy protection as a collective trade mark.

The battle on cheese trade marks

There are previous decision by EU courts relating to cheese and trade marks. We may recall the decision C-614/17 on Spain’s Queso Manchego (commented by IPKat here) and the decision C-132/05 on Italy’s Parmigiano Reggiano (commented by IPKat here).

More recently, on 3^rd March 2023 the U.S. Court of Appeals for the Fourth Circuit stated that the name “gruyere” can be used to label cheeses from outside of the Gruyère region of Switzerland and France, thus upholding a decision of the United States Patent and Trademark Office (USPTO) ruling that “gruyere” can lawfully be used to describe cheese regardless of where it was made. In this decision the U.S. court outlined three categories of evidence, similar to those highlighted by the decision in comment: the US Food and Drug Administration’s standard of identity for gruyere cheese; the prevalence of gruyere cheese produced outside of Switzerland and France, including domestically in the United States; and the common usage of the term.

Picture by Arianna Antonelli