To analyse the intricate relationship between geographical names and their registration as trademarks at the EU level, a focus must be placed on the provisions of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark (EUTMR) and the relevant case law from European courts. The objective is to outline the core criteria used to evaluate whether a geographical name is descriptive or distinctive, and whether it meets the requirements for trademark registration. The interest in such an analysis is sustained by the increased number of trademark applications containing geographical names and the delicate criteria that the offices must assess.
According to EU trademark law, any trademark consisting solely of geographical names (e.g. the name of a country, region, city, lake or river) should be refused registration by the EUIPO where the use of that name is descriptive of the place of origin of the goods or services. This rule is set out in article 7 (1)(c) of EUTMR which prohibits the registration of: “trade marks which consist exclusively of signs or indications which may serve, in trade, to designate (…) geographical origin (…) of the goods or of rendering of the service (…).” This provision can also be invoked as a ground for invalidity pursuant to Article 59(1)(a) EUTMR. Even if at first glance the legal provision seems to be pretty clear, at a second and more deep analysis the practical application is not similar easy and the Court of Justice of the European Union (CJEU) rulings become highly relevant.
The Landmark Chiemsee Case: Establishing the Test for Descriptiveness
A defining case in assessing the conditions under which geographical names can be registered as trademarks, as well as situations where their use might mislead or affect public interest, is the Judgment of the CJEU in the joined cases C-108/97 and C-109/97 (the Chiemsee Case). This ruling outlined a structured approach at the EU level for assessing the descriptiveness of trademarks that designate a geographical name, consisting of the following steps:
(i) Recognition of the geographical name:
Firstly, it is necessary to establish whether the trademark designates a geographical name and whether it is effectively recognised as such by the relevant public.
(ii) Association with Goods and Services:
Secondly, it is essential to assess whether the public establishes a mental association between the geographical name designated by the trademark and the relevant category of goods and services. The association between the geographical name and the respective goods and services could identify not only the actual (or potential) place of manufacture of the goods in question but also other elements, such as the place where the goods were designed and developed (CHIEMSEE, § 36).
(iii) Future Association:
Lastly, if the public does not currently make such an association, the decision-taking body must determine whether it is reasonable to assume that the public will establish this association in the future. In this context, consideration must be given to the degree of familiarity of the relevant public with the name in question, as well as the characteristics of the place designated by the name and of the category of goods in question (CHIEMSEE, § 32, 37).
Furthermore, it is not necessary to establish that the name actually designates the true geographical origin of the goods or services. It is enough to demonstrate that the connection between the name of the place and the goods / services may enable the relevant public to perceive the contested sign as an indication of the origin of those goods.
Exploring the Refusal of Geographical Names
In support of the applicability of the above-discussed legal provisions and the Chiemsee Case, the following EUIPO decisions highlight cases where trademarks containing the name of a city or state were found to be descriptive for the goods and services for which protection was sought and were therefore refused registration:
- In the MONACO Case (filed for registration, inter alia, for goods and services in Classes 9 –‘‘magnetic data carriers”; 16 – ‘‘printed matter, photographs”; 39 – ‘‘Transport; organisation of travel; 41 – ‘‘Entertainment; sporting activities”; and 43 – ‘‘Temporary accommodation”), the General Court found that the term “Monaco” corresponds to the name of a principality known worldwide, particularly for the renown of its royal family, the hosting of a Formula 1 Grand Prix and a circus festival. The General Court concluded that the trademark “MONACO” should be refused for goods and services in Classes 9, 16, 39, 41 and 43, as the term “Monaco” could be used, in trade, to designate origin, geographical destination or the place of supply of services. Consequently, the trademark was deemed descriptive for the goods and services in question.
- In the MARBELLA Case (filed for registration, inter alia, for goods in Class 32 – “Non-alcoholic beverages, Beer and brewery products” and “water”; and 33 – “Alcoholic beverages; Cider”), the Board of Appeal determined that, although the Spanish city was not currently perceived by the relevant public as a place of origin for water, it could reasonably be regarded as such in the future due to the proximity of the Sierra de las Nieves and the possibility that the public might associate the water with a source in those mountains. Furthermore, the Board noted that Marbella is a well-known tourist destination in southern Spain, even though it is not presently recognised for beer production.
However, the Board of Appeal also considered that while certain Member States, such as Belgium, the Czech Republic, and Germany, enjoy an established reputation for beer production, there is a growing trend of producing and marketing beer on a local and regional scale in other countries. Given that the use of geographical names is also common in the beer industry, the Board of Appeal ultimately concluded that it would be reasonable to consider the “Marbella” trademark potentially descriptive, in the future, of the geographical origin of beer.
- In the AUSTRALIA Case (filed for registration in connection with goods and services in Classes 12 – Vehicles, 25 – Clothing and Footwear, 28 – Toys, 35 – Advertising, and 37 – Construction Services), it was noted that Australia is a nation with a strong economy, having experienced consistent growth for more than a quarter of a century. Due to its size, political and economic significance, and popularity as a vacation destination, Australia enjoys a solid reputation among the population of the European Union.
Regarding all the goods and services for which protection was sought, the contested trademark was perceived as evoking a positive image, specifically representing a particular lifestyle. Australia is frequently associated with a sense of freedom, vast open spaces, and a connection to nature, exemplified by the Outback region. As a result, it was considered likely that the geographical name “Australia” would influence consumers in their choice of goods and services, as they would associate the branded products and services with this unique lifestyle, triggering a positive reaction.
Consequently, the trademark was deemed descriptive, as it indicates that the use or consumption of the respective goods and services contributes to the creation of a specific lifestyle associated with Australia.
- In the OSLO Case (filed for registration, inter alia, for stones, construction materials, furniture, and home decoration items in Classes 19, 20, and 27), the Board of Appeal found that the capital of Norway serves as the industrial center of a country renowned for its forestry, wood, and stone industries. As a result, it could be perceived as an indicator of the place of manufacture for the goods in question or, at the very least, as potentially being perceived as such in the future due to its favorable natural and economic conditions. Additionally, it was emphasised that, given the strong reputation of Scandinavian design, Norway’s capital could also signify the location where furniture and flooring in Classes 20 and 27 were designed.
- In the BRASIL Case (filed for registration in connection with goods in Classes 32 – “Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverage”; 33 – “Whisky; whisky-based beverages”), the Board of Appeal recognised that the mere existence of whisky production in Brazil was not sufficient in itself to presume that the relevant consumer of whisky will associate the sign with the goods. However, it had to be assessed whether it was reasonable to assume that such an association might be established in the future. The Board of Appeal assessed a number of factors, including the fact that it is current practice in trade to indicate the geographical origin of whiskies and whisky-based beverages. It concluded that the designation ‘Brasil’ would be understood as an informative indication for whisky and whisky-based beverages.
When Descriptiveness Fades: Registrable Geographical Names
We now highlight cases in which geographical names were not recognised as indicating the origin of goods or services and were eligible for trademark registration due to the absence of any actual or potential connection between the geographical name and the specified category of goods or services:
- The SUDAN Case (registration no. 000156067 for goods in Class 2 – “Dyes, pigments, pigment preparations, liquid crystals, colorants, paints”). In its analysis, the Board of Appeal noted that Sudan’s primary exports are agricultural products, including cotton, sesame, livestock, and gum arabic. Although Sudan has been exporting oil since 1999, the Board’s research found no evidence of current or foreseeable production of relevant dyes in the country. Thus, given the specialised nature of the target audience, it is unlikely that the public would associate the products with Sudan or consider them originating from there.
- The GREENLAND Case (registration no. 001022474 for goods in Classes 29 – e.g. “meat”, 30 – e.g. “chocolate” and “milk” and 31 – e.g. “fresh vegetables and fruits”). The Board of Appeal emphasised that geographical names are not inherently excluded from trademark protection. Instead, their eligibility must be evaluated concerning the specific goods or services. Names like “Greenland” could only be rejected if they are currently associated with the goods or if such an association could reasonably be expected in the future. Greenland is not commonly known as a producer or exporter. Thus, for the goods associated with the above-mentioned classes, the name “Greenland” may be understood as an imaginative or fanciful term rather than a geographical origin.
However, we also add here that this trademark was filed for registration for fish, seafood, and related products (Class 29 and 31), but the Board of Appeals noted that in Greenland, fisheries represent a major export sector: in 1995, almost 150,000 tons of fish (86,000 tons of shrimp and 26,000 tons of halibut) were caught in Greenlandic waters, constituting 94% of the total export value. Thus, the trademark was refused registration for these products on the grounds that the term “Greenland” is descriptive and cannot function as a trademark because it would be perceived as indicating the geographical origin.
Concluding Thoughts on Geographical Names
In the context of evaluating the eligibility of geographical names as EU trademarks, particularly when analysing their descriptive nature, significant emphasis must be placed on perceptio publici, referring to the perception of the relevant public concerning the goods or services for which registration is sought. The analysed case law highlights that, in limited and particular cases certain geographical names may possess an imaginative or fanciful character in the context of specific goods or services, rendering them eligible for registration.
Conversely, the names of countries or regions with a strong reputation are more challenging to register, as they tend to trigger positive associations in the public’s perception. On the other hand, geographical names that are less familiar to the EU public or that lack a present or future economic or commercial connection to the relevant category of goods/ services may be considered distinctive and, therefore, eligible for trademark protection.
The fundamental principle remains the protection of public interest, ensuring that these geographical names remain for use by all relevant actors in the sector, in line with the concept of communis utilitas.
Article by Diana Cretu and Iulia Burbea.