EU Trade Mark Refused Due To Geographical Restriction

In the recent case of Internet Consulting GmbH v European Union Intellectual Property Office (Case T-11/15), the General Court (GC) has discussed the possibilities of having trade mark protection for a mark or indication which contains a geographical sign of origin.

The Applicant (Internet Consulting GmbH) applied for a trade mark "SUEDTIROL" in classes 35, 39 and 42. Shortly after the application was filed, it was opposed by Provincia Autonoma di Bolzano-Alto Adige ('Provincia'). They filed for a declaration of invalidity. The claim to have the trade mark declared invalid was rejected initially however the Board of Appeal decided that the mark was registered contrary to Article 7(1)(c) of the EG 207/2009 (Regulation).

Südtirol or Suedtirol is an autonomous province in northern Italy. In English, the small province is known as South Tyrol. Usually, geographical indications cannot be the basis of a trade mark registration.

As background, a geographical indication is a sign used on a product to symbolise its origin where a specific quality, characteristic or reputation of the product is essentially attributable to that origin. For example, "Bordeaux" is a geographical indication of the wine originating from the region of Bordeaux in south France. The wine there has been produced since the eighth century.

The GC ruled that the trade mark "SUEDTIROL" would cause confusion in the public in the sense that the mark has the same name as South Tyrol which is well known for its prosperity and economic strength. The public would easily make a connection that the products and services offered by Internet Consulting GmbH are associated with the province in Italy.

The IC argued that Article 12 of the above Regulation provides for a 'safety net' which allows a trade mark with a geographical indication to not be monopolised. This argument was rejected by the GC. Their Court's reasoning was that Article 12 does not generally allow parties the right to use a geographical location as a trade mark.

The Court concluded that Article 12(b) does not sufficiently protect the interests of the public to protect geographical indications and that the decision to prevent "SUEDTIROL" from being registered as a trade mark pursuant to Article 7(1)(c) be upheld.