Geographical indications – Less is more (distinctive)

The more precise a geographical indication refers to a specific location, the less distinctive it seems to be, at least according to the case law of the General Court. This counter-intuitive result has been confirmed recently in invalidity proceedings concerning the trade mark ‘Hinterland’.

Background

On 9 September 2019, an individual filed for registration of the EU trade mark no. 018121682 ‘Hinterland’. It covered ‘spirits [beverages]; distilled beverages; schnapps; liqueurs; brandy; whisky; gin; herb brandy; fruit brandy’ in class 33.

On 3 January 2022, Erzeugergemeinschaft Winzersekt GmbH (‘Winzersekt’) filed an application for invalidity of the EU trade mark ‘Hinterland’. Winzersekt argued that the trade mark lacked distinctiveness (Art. 7(1)(b) EUTMR) and was descriptive (Art. 7(1)(c) EUTMR).

The Invalidity Division of the European Union Intellectual Property Office (‘EUIPO’) granted the application. The EUIPO’s Board of Appeal (‘BoA’) upheld the appeal filed by the trade mark owner and rejected the invalidity application. Winzersekt appealed to the General Court.

The General Court’s decision

The General Court dismissed the appeal (case T-470/23).

The judges recalled that a registered trade mark enjoys a presumption of validity. It is for the invalidity applicant to establish that the absolute grounds for refusal existed at the filing date of the trade mark.

The General Court found that the goods at issue are directed at the general public with an average level of attention. The English-, French- and German-speaking consumers were deemed decisive.

Descriptiveness

The judges referred to consistent case law according to which there is a public interest in keeping signs or indications available, which may serve to designate the geographical origin or destination of the goods. Such signs may not only indicate characteristics of the goods (such as their quality) but may also influence consumers’ preferences in other ways, for example, by linking the goods with a place with positive associations.

A sign may be refused registration only if the geographical name designates a place which, at the time of the application for registration, is associated by the relevant public with the category of goods concerned, or if that can reasonably be expected in the future.

In contrast, Art. 7(1)(c) EUTMR does not, in principle, preclude the registration of geographical names, which are not known to the relevant public, or at least not as the name of a geographical place, or of names in respect of which, because of the characteristics of the place designated, it is unlikely that the relevant public could assume that the goods in question originate from that place.

Turning to the trade mark ‘Hinterland’, the judges found that this term was defined in the German dictionary Duden, as ‘a part of land situated around a central place or behind an important frontier line’. The word has been adopted with the same meaning in English and French.

The Court held that the link between ‘Hinterland’ and the relevant goods is not sufficiently direct and specific to enable the public to recognise immediately and without further reflection a description of the intended purpose or any other characteristic of alcoholic beverages. 

 

The term ‘Hinterland’ did not designate a specific geographical location or area.

Further, Winzersekt did not establish that the mark described any geographical features of a place, even an abstract one.

Additionally, ‘Hinterland’ did not inform the public of characteristics or particularities for which a geographical place is known and which would make it likely that the relevant public could consider that the goods at issue originated in that place.

The judges did not consider relevant that the trade mark owner used the term ‘Hinterland’ to explain the origin of its gin. The screenshot submitted by Winzersekt contained a single reference to ‘Hinterland’ and post-dated the application of the contested trade mark. The screenshot was found to have no bearing on the situation at the filing date for the various alcoholic beverages.

The Court was also not convinced of the claim that ‘Hinterland’ evokes nature or rural areas. The judges recalled that Art. 7(1)(c) EUTMR only prevents the registration of signs which designate an essential characteristic of the goods in a concrete and not vague or abstract manner. The alleged characteristics conveyed by ‘Hinterland’ remained too vague and imprecise for that term to be considered descriptive.

Other evidence of use of ‘Hinterland’ submitted by Winzersekt only showed use of this term with other words or phrases, which clarified its meaning. The Court concluded that ‘Hinterland’ in isolation does not enable consumers to imagine the type of goods or their characteristics.

Distinctiveness

Based on the arguments summarized above with respect to the non-descriptiveness of ‘Hinterland’, the General Court confirmed the BoA’s finding that this term does not have a direct and immediately perceivable meaning for alcoholic beverages.

Winzersekt could also not establish that ‘Hinterland’ was understood as a generic term, which informed the public of the goods‘ characteristics or their nature.

Even a laudatory connotation of the mark would not render it non-distinctive. As a consequence, the General Court confirmed the distinctiveness of ‘Hinterland’ for the various alcoholic beverages.

Comment

The decision is in line with previous case law on geographical indications. For instance, the word mark ‘ANTICO CASALE’ (Italian for ‘old farmhouse’) was considered to be distinctive and non-descriptive for various foodstuffs (case T-327/16). Likewise, the term ‘Atlántica’ (Spanish for the ‘Atlantic’) was deemed to be distinctive for wine because the Atlantic coasts of Africa, America and Europe are large regions and do not describe characteristics of wines (case T-301/23).

Based on the General Court’s case law, terms like ‘sea’ and ‘forest’ should be registrable, while ‘Baltic sea’ or ‘Black Forest’ might be too specific and lack distinctiveness.

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