Contact form

Send an email

 Receive the newsletter

Call

Geographical origin and trademark descriptiveness

14-11-2017

Brand names can also be considered too ‘descriptive’ for trademark protection due to their geographical resonance, as the recent judgement against the application to protect ‘KARELIA’ illustrates. The sign was considered to be descriptive for industrial oils.

As a general rule, a sign must have ‘distinctive’ character if it is to be eligible for trademark registration, as this enables the relevant public to distinguish the marked goods and services as belonging to a specific undertaking, as opposed to goods and services originating from other undertakings. This requirement is deemed not to be met if the sign is descriptive of the goods and services in question; in other words, it exists solely of signs or indications that designate the kind, quality, quantity, intended purpose, value or geographical origin of the goods or services.

A trademark application will be refused, therefore, if it contains a geographical name that will lead the relevant public to make a connection between that place and the products in question. This ground of refusal also applies where that connection is likely to be made in only a part of the European Union. This was the case in the trademark application for the word mark ‘KARELIA’.

Background to the ruling
Registration as a European Union trademark (EUTM) was sought for the word mark ‘KARELIA’ for inter alia industrial oils and greases, fuels and illuminants. The application was refused on the grounds it was devoid of distinctive character due to the descriptiveness of the geographical name. Karelia is a border region between Finland and Russia, known for its highly developed forestry industry and the development of biofuels (see map, below right).

http://www.novagraaf.com/files/89941/Karelia.jpgThe assessment
Descriptive and non-distinctive signs are excluded from trademark protection in the public interest, as it is held that such signs must be able to be freely used by anyone and should not be monopolised for products or services. In the case of geographical names this is even more held to be the case, given that the use of geographical names could be taken as an indication of the quality and other characteristics of the goods concerned.

In the assessment of whether the relevant public will make a connection between the geographical name and the products in question (either currently or in  the future), the relevant circumstances of the case will be taken into account by the examiner. At EUIPO, this specifically includes:

  • The nature of the goods or services;
  • The reputation of the area, specifically within the economic sector;
  • The relevant public’s greater or lesser familiarity with:
    • The specific geographical name
    • The characteristics of the particular place
    • The category of goods or services

The relevant public in this case was held to be composed of the general and specialised Finnish and Swedish public with a high level of attention. Based on the criteria above, EUIPO and later its Board of Appeal refused the application. The EU General Court recently upheld that decision on appeal. It agreed that the name ‘KARELIA’ had a reputation amongst the relevant public as an area known for its highly developed forestry industry and the development of biofuels. Consequently, the relevant public would likely make a connection between the Karelia region and the goods in question. As a result, the mark was held to be perceived as describing the geographical origin of the relevant goods, and was refused as descriptive of the category of goods and devoid of distinctive character.  

The relevant public
Of particular note in this case is the fact that a trademark can be refused for the entire EU if only a small part of the relevant public is deemed likely to link the geographical name to the origin of the goods. As we have written previously, the requirement for ‘distinctiveness’ can often appear subjective as it is dependent on a national trademark office’s policy. As such, we recommend you speak to your Novagraaf attorney for advice on whether your chosen brand or product names are likely to meet criteria for registration in your chosen classes and geographies before they are launched to market.  

Myrthe Pardoen works at Novagraaf’s Competence Centre. She is based in Amsterdam