Grana Padano: PDO and collective mark protections can be cumulative in the EU (R 1073/2022-5)

In a recent decision (R 1073/2022-5) that helps to clarify the relationship between EU collective marks and protected designations of origin (PDOs), the Fifth Board of Appeal of the EUIPO (the Board) held that the Grana Padano Protection Consortium (GPPC) could benefit from both a collective mark registration and a PDO requirement in respect of two similar signs. 

Background

In 2020, the GPPC applied (the Application) to register the following figurative mark (the Mark) as a collective mark in the European Union for products in class 29, namely cheeses which conform with the specification of the Grana Padano protected designation of origin (PDO):  

However, the Examiner assigned to the Application by the EUIPO issued a refusal, primarily on the basis that (as shown below), the Mark is almost identical to the logo contained in the product specification for the Grana Padana PDO: 

Given that the logo relating to the PDO must be used by any cheese manufacturer whose Grana Padano complies with the PDO product specification, regardless of whether or not they are a member of the GPPC, the Examiner considered that members of the public might be misled by the Mark, thinking it to be a geographical designation of origin, as opposed to a collective mark, whose function ought to be that of indicating membership of a collective. 

The GPPC appealed to the Board. 

The Board's decision

The GPPC's appeal was, in summary, based on the following points: 

1. The PDO specification required the PDO logo to be used on the products themselves (i.e. the wheels of cheese), whereas the Mark was to be used on the consumer-facing product packaging, for example for slices or grated cheese sold in supermarkets.  
2. Further requirements would be imposed upon those parties seeking to use the Mark on packaging, the purpose of which is to ensure uniformity in respect of graphic elements in order to assist consumers to immediately identify the relevant products on shelves. 
3. The Examiner had, with its decision, deprived the Consortium of a form of protection provided for by law, failing to properly understand the modalities of use proposed for each sign, which were ancillary to, rather than in replacement of, the PDO. 
4. Importantly, the protection conferred by the PDO only applied to the GRANA PADANO name and the sign embossed upon the cheese wheels, not to a particular combination of graphics and colour. 
5. Similarly, if someone wanted to file a trade mark similar to the shape below, without using the words GRANA PADANO, it would not be possible to prevent this merely on the basis of the PDO. 
   

Prior to the appeal being heard, the Rapporteur also intervened raising issues of distinctiveness for the purposes of Article 7(1)(b) of the European Union Trademark Regulations (EUTMR), arguing that a collective mark which featured the same sign as one required by a PDO did perform the essential function of a trade mark.  

Misleading the public 

The Board began by setting out the essential function of a collective mark pursuant to Article 74(1) EUTMR, namely to distinguish the goods and services of the members of the association which owns the collective mark, from those of other undertakings (DARJEELING, C-673/15). 

Under Article 76(2) EUTMR, an application for an EU collective mark will be refused where the public is "liable to be misled as regards the character or the significance of the mark", particularly if the mark in question is likely to be taken as "something other than a collective mark". 

The Board observed that it is an established general principle of EU trademark law is that deceptiveness of a mark must be assessed on the basis of the public's perception when they come into contact with such mark - e.g. at the time of purchase. 

In respect of the Mark, the Board noted that there is nothing in the EUTMR which expressly prohibits cumulative protections of collective marks and protected geographical indications, even where the signs in question are similar or identical. The Board in fact considered that in this case, the two signs in question were not identical but only partially similar - and it could not be excluded that the consumer will be able to notice the differences between them. 

In fact, if the signs were to need to be necessarily dissimilar, as suggested by the Examiner, this might lead consumers to believe that there was some difference between the products - in respect of their origin or quality for example. 

Further, it was clear from the proposed manner of use of the Mark, i.e. to be affixed only on the packaging of Grana Padano cheese, upon authorisation from the Consortium, that the use of the Mark would not be the same as that of the PDO sign. The Board pointed out that, in any event, any party authorised by the Consortium to use the Mark, would necessarily be a party which is already entitled to use the PDO sign - this denotes an additional level of protection given by the collective trademark. 

Distinctiveness

In respect of the Rapporteur's comments regarding distinctiveness under Article 7(1)(b) EUTMR, the Board agreed that an application for a collective mark, in respect of a sign which may also designate a PDO, must also contain elements enabling consumers to distinguish the goods and services as originating from an authorised party (BBQLOUMI, C-766/18). 

The Board however found that, in light of its reasoning regarding the Mark not being deceptive, the arguments regarding its lack of distinctiveness also failed. 

As the relevant public will only ever see the Mark on a package of Grana Padano cheese, the Mark will confirm to the consumer the provenance of the product, thus realising its essential function, and completing the framework of protection offered by the PDO. 

Comment

Whereas, in this Kat's view, the Board was a little generous in stating that consumers might be likely to notice differences between the two signs, overall the finding that the protections offered by PDO designation requirements and collective marks can be cumulative would appear to be right, and will be reassuring to PDO holders that have struggled to enforce their rights in certain EU territories, where collective marks may give them greater recourse.