Place-based problems
Background to the dispute
On 29 April 2002, the intervener, Castel Frères SAS, filed a CTM Application No. 2678167 CASTEL (the disputed mark) in Class 33 for “alcoholic beverages (except beers)”. The Application was granted on 1 June 2004. On 30 October 2007, Fürstlich Castell’sches Domänenamt Albrecht Fürst zu Castell-Castell (the Applicant) filed an application of invalidity based on “Castell” being a geographical indication for wines in Germany as well as France, Greece, Italy and Spain. On 19 June 2009, the cancellation division rejected the application for invalidity. On 18 August 2009, the Applicant filed a notice of appeal with OHIM which was dismissed on 4 May 2010 by the second Board of Appeal of OHIM. Fürstlich Castell’sches was still dissatisfied with this Decision, hence the filing of the matter before the General Court.
The Applicant raised six pleas in support of its action; an analysis of the most pertinent pleas only will follow. One plea related to the alleged infringement of Article 7(1) (c) of Article 52 (1) (a) of the Regulation 2007/2009 as the Applicant complained that the Board of Appeal erred in finding that the disputed Mark had no descriptive character in relation to the goods in question. The second main plea related to the alleged infringement of Article 7(1) (g) and (h) regarding the conclusion that the disputed mark did not consist of a geographic indication due to the difference in spelling between CASTEL and Castell.
Article 7(1)(c)
Turning to 7(1)(c), we know this provides that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or rendering the service, or other characteristics of the goods or service, cannot be registered. This assessment must occur from a consumer’s viewpoint in accordance with the normal usage of the mark. Therefore, in order for a sign to be caught by the prohibition of 7(1)(c), there must be a sufficiently direct and specific link between the sign and the goods/services in question.
Article 7(1)(c) does not in principle preclude the registration of geographical names which are unknown to the relevant class of persons, or at least unknown as a designation of a geographical location (Windsurfing Chiemsee, Paragraph 33). When the geographical name is unknown, it is necessary to assess whether the sign is likely to designate a geographical origin for the category of goods concerned. In this case, the relevant public is determined by reference to the average consumer in the member state where the place is located. Thus the Board of Appeal concluded that the German Patent and Trade Mark Office was best placed to assess the relevant facts and the perception of the relevant consumer in relation to this geographic indication, which was considered to be the correct approach by the General Court.
The Board of Appeal had acknowledged that the term “Castell” is a protected geographic indication for wines and as such, is recognised under a number of bilateral treaties. However, the Applicant failed to establish that (1) the geographical name “Castell” has become famous or known to the relevant consumer, or (2) that it may be associated with wine produced from “Castell” being the Franconia region in Germany. Consequently, the Board of Appeal took the view that the disputed Trade Mark CASTEL would not be understood as a geographical name and would not be associated with the goods in question by the relevant consumers.
In the present case, the General Court confirmed the Board of Appeal’s decision that the relevant public was able to perceive the term “Castell” as a geographical indication for wine, it would be known sufficiently to the relevant public and that it would also be associated with alcoholic beverages. Consequently, it must be held that contrary to OHIM’s claims, the term “Castell” designates a place which is sufficiently known to the relevant public for the production of wines and thus is associated with the category of goods concerned.
However, the General Court rejected the Board of Appeal’s view that the difference in the spelling between the geographical indication “Castell” and disputed mark CASTEL meant there was a perceptible difference between the earlier geographical indication and the disputed mark. The Court held that, contrary to what the Board of Appeal stated, a minimal difference in spelling, particularly one which does not affect the pronunciation of the mark, is not a perceptible difference from the point of view of the relevant public. Therefore, the Court held that there is a sufficient direct and specific link between the disputed mark and alcoholic beverages and so the disputed mark must be held to be descriptive of the aforementioned goods.
In light of the above, the first plea being the alleging infringement of Article 7(1)(c) was upheld. No further detailed analysis was needed on the other pleadings given the success of this absolute ground.
Conclusion
As reported, the Board of Appeal concluded that the disputed mark must be assessed with reference to the German public with “Castell” predominantly being a German geographical indication. It is therefore interesting to note that the German Patent and Trade Mark Office has granted a German Registration for CASTEL for alcoholic beverages in Class 33, despite the cancellation of the CTM Registration. This case once again shows the difficulty for Attorneys in advising clients as inconsistencies in national and EU law relating to geographical indications rumbles on.
Published in Issue 406 December 2013/January 2014 ITMA Review
