Wake Up and Smell the Coffee - PGI and Trademark Oppositions

The Colombian Coffee Growers Federation ("Federation") is a non-profit organisation representing over 500,000 coffee growing families. The Federation filed an application for a Protected Geographic Indication ("PGI") for CAFÉ DE COLOMBIA on 8 June 2005 and the application was granted in respect of coffee. Colombian Coffee was the first agricultural food product from a non-EU country to receive PGI recognition in Europe.

A PGI is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. A very limited number of products have achieved PGI recognition including Rioja Wine, Parma Ham and Darjeeling Tea.

The PGI allows the Federation to promote their coffee and benefit from the reputation and quality of Colombian coffee. In order to be branded with CAFÉ DE COLOMBIA, the product must contain 100% Colombian coffee and meet the standards stipulated by the Federation.

On the basis of their earlier rights in the PGI, the Federation filed an opposition under Article 8(4) Community Trade Marks Regulation (207/2009/EC) ("CTMR") against CTM application No. 9225798 for the figurative mark COLOMBIANO HOUSE filed on 6 July 2010, in the name of Nadine Hélène Jeanne Hautrive.  The application covered, "services for providing food and drink; restaurants, bars and cocktail bar services; catering services; stores administering of food and drink indoor or take away; food & Beverage services; sandwich bars, snack bars" in class 43.

The Opposition Division at OHIM rejected the opposition, stating that the services in class 43 by the mark applied for did not belong to the same class of product as the PGI within the meaning of Article 14(1).

The Federation also filed an invalidity action against CTM No. 4635553 for the figurative mark COLOMBIANO COFFEE HOUSE, in the name Accelerate s.a.l. This registration covered "tea, cocoa, sugar, rice, tapioca, sago; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice in class 30 and "services for providing food and drink" in class 43. The Cancellation Division rejected the invalidity application, again citing the provisions in Article 14.

The Federation filed an appeal against both decisions before the General Court. The General Court held that in both cases OHIM had erred in applying Article 14 read in conjunction with Article 8(4) of the CTMR and instead should have applied Article 13 of the CTMR.  Whereas Article 14 requires that the contested trademark and the PGI relate to the same class of products, Article 13 does not contain this requirement.

The OHIM Opposition Guidelines state that in an opposition relating to a PGI the relevant provisions are Article 13 and a PGI can prevail under Article 8(4) if:

"– the contested [Community trade mark application] exclusively consists of the whole PGI or adds other words or figurative elements (direct or indirect use) for comparable products or, even for non-comparable products, if the use of the PGI exploits the reputation of the protected name

– the contested [Community trade mark application] contains or consists of an imitation or of an evocation of the PGI

– other misleading indications and practices."

The General Court has ruled that OHIM's error in applying article 14 rather than 13 will have a decisive effect on the overall decisions. Therefore, both cases have been sent back to the Board of Appeal.