In Case T-806/19, Govern d'Andorra v EUIPO (Andorra), decided on 23 February 2022, the General Court (Ninth Chamber) confirmed that the figurative sign 'Andorra' could not be registered as an EU trade mark, in respect of the goods and services applied for, on the basis that the mark is descriptive.
Facts of the Case
On 5 June 2017, Govern d'Andorra (the "Applicant"), submitted an application for registration of an EU trade mark to the European Union Intellectual Property Office ("EUIPO"). The Applicant sought to register the figurative sign which reads 'Andorra' for those goods and services falling within Classes 16, 34, 36, 39, 41 and 44 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
On 23 February 2018, the Applicant's application for registration was rejected on the basis of Article 7(1)(b), (c) and (2) of the EU Trade Mark Regulation (Regulation 2017/1001) (the "Regulation"). The examiner considered that the term 'Andorra' merely described the geographical origin of those goods and services and that the relevant consumers would perceive the mark applied for as an ordinary mark and not as a mark belonging to a specific proprietor.
On 20 April 2018, the Applicant appealed to the EUIPO against the examiner's decision but the EUIPO's Board of Appeal also dismissed the appeal. The Board considered that the relevant public, which included both the general public and professionals, was the Spanish-speaking public in the EU, with a level of attention ranging from medium to high. Regarding the descriptive character of the mark in relation to the goods and services applied for, the Board of Appeal argued that, although the sign contained figurative elements with slight stylisation, this was insignificant and did not overcome the descriptive nature of the mark. The relevant public would perceive the sign as indicating the geographical origin of the goods and services, or as the place where those services would be provided. Regarding the distinctive character of the mark, the Board of Appeal concluded that the sign 'Andorra' merely informed the relevant public of the geographical origin of the goods and services, but not of their commercial origin, rendering the mark devoid of any distinctive character.
The Applicant brought its claims before the General Court of the European Union (the "Court"). With particular focus on the Regulation, the Applicant claimed infringement of two grounds (Article 7(1)(b) and (c)) in support of its action.
Interpretation and Decision of the General Court of the European Union
- Infringement of Article 7(1)(c ) - descriptiveness
Article 7(1)(c) of the Regulation provides for lack of descriptiveness as being an absolute ground for refusal of registration of a trade mark with regards to the goods and services for which it is applied. This is where the mark consists exclusively of signs or indications which, in trade, serve to designate the kind, quality, quantity, geographical origin, etc. In this respect, the Applicant claimed that, for registration to be refused on this ground, a link must be established between the goods or services and the geographical name in question, since the latter would not automatically indicate geographical origin when considered individually. The Applicant insisted that Andorra is not a country known for the goods and services in question and thus there is no actual or potential link to be made, by the consumer, which would entitle the EUIPO to consider 'Andorra' as indicating geographical origin within the meaning of Article 7(1)(c).
It is to be noted that Article 7(2) provides that the grounds in sub-article (1) apply notwithstanding that the grounds for non-registrability subsist in only part of the Union. Any such descriptive sign would be incapable of performing an essential function of the trade mark, that is, that of identifying the commercial origin of the product or services. Furthermore, should a descriptive mark be registered, it would result in the signs or indications to which it refers being reserved for a single undertaking by virtue of their registration of such mark. This is unacceptable since, in the public interest, such signs or indications must be used freely by everyone.
The Court stated that there is a general interest in preserving the availability of signs which can be used to designate geographic origin of products due to their ability to reveal the quality and other properties of the product concerned. Thus, for a sign to fall within the scope of the prohibition found in Article 7(1)(c), there must be a sufficiently direct and concrete link which allows the public concerned to perceive, immediately and without further reflection, a description of the goods and services in question or one of their characteristics. Thus, the assessment as to the descriptive character of a sign can only be made in relation to the goods or services concerned and in relation to the public's understanding of them.
The EUIPO Board of Appeal deemed the relevant public to be the Spanish-speaking public in the EU, including both the general public (with regards to the classes of mass consumer goods) and professionals (with regards to classes of, for example, travel, financial and real estate services).
When a sign is composed of a geographical name, the Court, in line with the EUIPO's approach, maintained that it must be established whether that geographical name is known among the public concerned as the designation of a place. The EUIPO would then seek to determine whether the name in question, in the eyes of the public, currently presents or may reasonably present in the future, a link with the category of goods or services so as to designate their geographical origin. A contrario sensu, Article 7(1)(c) does not preclude the registration of geographical names which are unknown in the relevant public circles, or unknown as the designation of a geographical place, or where relevant public circles would not consider that the category of goods or services come from that place.
The Court explained that it is necessary to analyse the existence of such link with regards to the various goods and services covered by the mark applied for. By way of example, I will mention two classes of goods which the Court referred to and discussed.
- Class 16 - the goods corresponding to
The Applicant, inter alia, applied for registration of the mark for goods corresponding to photographs. Since the mark applied for may constitute a direct reference to the place where the photographs were taken and since it is descriptive with regards, at least, to the photographs of Andorra, the Board of Appeal sufficiently established a direct and concrete link between the photographs and the mark applied for to consider that the term 'Andorra' could be used, in trade, as an indication of the geographical origin or destination of these products. Therefore, the mark had, for the goods in question, a descriptive character.
- Class 34 - the product corresponding to 'tobacco'
- The Court explained that the Board of Appeal was right to consider that the relevant public, particularly the Spanish-speaking public, would be likely to establish a link between the tobacco (sold under the mark 'Andorra') and Andorra. Andorra has been associated with tobacco due to the price at which the product was accessible there and the more favourable provisions on customs enjoyed by tobacco in that country. This information was also available on public sources, solidifying this argument. The mark 'Andorra' was therefore capable of designating the geographical origin of that product.
The Court concluded that the Applicant had not succeeded in challenging the assessments of the Board of Appeal regarding the descriptive nature of the mark in relation to the goods and services in question and that this mark could therefore not be registered as an EU trade mark since it falls within the absolute ground for refusal under Article 7(1)(c) of the Regulation.
2. Infringement of Article 7(1)(b) - distinctiveness
The Court explained that since, in respect of the goods and services in question, the sign presented for registration is descriptive within the meaning of Article 7(1)(c) of the Regulation, this ground alone justifies the refusal of registration and it is thus not necessary to examine the alleged infringement of Article 7(1)(b) of the Regulation.
This article was first published in the Malta Independent.
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