Originally published May 8, 2015
Keywords; CJEU, Community Trademark, Distinctiveness, Grounds for Refusal
In its decision of 15 January 2015, the General Court of the European Union (GC) held that the Principality of Monaco cannot claim protection of the word mark MONACO in the European Union in respect of some of the goods and services applied for. The protection was refused for, inter alia, magnetic data carriers, printed matters, photos, travel arrangement services, entertainment, sports activities, and temporary accommodation.
In 2010, the Principality of Monaco had been granted, by the World Intellectual Property Organisation (WIPO), an international registration of the word mark MONACO covering the territory of the EU. However, in 2013, the Office for Harmonization in the Internal Market (OHIM) refused to register the relevant trade mark for the aforementioned goods and services. With regard to Art. 7 (1) (b) and (c) of Regulation (EC) No 207/2009, the OHIM based its refusal on the mark's lack of distinctive character. Further, the term "Monaco" designated the territory of the same name and could, therefore, be perceived by the relevant public as designating the origin or geographical destination of the goods and services concerned.
The current trademark owner, a company under the laws of Monaco, then filed an action against the decision of the OHIM before the GC. The trademark owner, among other things, claimed that the Board of Appeal of OHIM failed to sufficiently substantiate its decision and that the scope of application of EU law did not extend to the territory of the Principality of Monaco. The GC, however, dismissed the action in its entirety and thus confirmed the decision of OHIM. In particular, the Court rejected the plaintiff's allegation that the scope of application of EU law did not extend to the territory of the principality. Rather, by requesting to have the EU designated for an international registration of the trade mark at issue, the principality placed itself within the scope of application of EU law.With regard to the alleged distinctive character of the trade mark MONACO, the GC established that the ascertained descriptive nature of the trademark itself implies the absence of a distinctive character for the goods or services in question. It held that:
"The term 'Monaco' is the name of a principality [...] which – despite its surface area of only approx. 2 km2 and a population of not more than 40 000 inhabitants – is known worldwide, even if only for its renowned princely family and the organization of a Formula 1 Grand Prix and a circus festival. The prominence of the Principality of Monaco is even bigger with Union citizens, in particular because of Monaco's common border with one member state, France; and its proximity to another member state, Italy; and the usage of the currency in use in 19 out of 28 member states, the Euro, by this third country." (unofficial translation made by author)
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