A trade mark which refers to a good or service of high quality which is abundantly present cannot be indicated as geographical origin
07-07-2017 Print this page
A trade mark such as LA MILLA DE ORO – which refers to a good or service with a high degree of value which is abundantly present in a single place – cannot constitute an indication of geographical origin. To indicate a geographical origin that sign must be accompanied by a name designating a geographical place so that the actual physical space may be identified. If a good or service with a high degree of value is abundantly present in a single place, is unlikely to have characteristics the use of which as a trade mark would constitute a ground for invalidity within the meaning of article 3(1)(c) of the Directive 2008/95.
The case of Juan Moreno Marin versus Abadía Retuerta. Juan Moreno Marin is the proprietor of the Spanish trade mark ‘La Milla de Oro’ for wines. Abadía Retuerta uses the sign ‘El Pago de la Milla de Oro’ on the labelling of the wines. The applicant states that the use of designation ‘la Milla de Oro’ is liable to give rise to a likelihood of confusion and is therefore an infringement of his rights. Abadía Retuerta maintains its position that that trade mark constitutes an indication of geographical origin and that it is necessary therefore to apply the absolute prohibition laid down by Article 5(1)(c) of Law 17/2001 on trade marks. The Audiencia Provincial de Burgos (Spanish court) refers the following questions ot the Court of Justice for a preliminary ruling:
‘1. May the prohibitions in Article 3(1)(c) of Directive 2008/95 include the use of a sign referring to the characteristic of a product or service which is that it can be found in abundance in a single place with a high degree of value and quality?
2. May a sign with these characteristics be regarded as a sign of geographical origin in so far as the product or service will always be concentrated in a specific physical area?’
The Court of Justice answers the preliminary questions in reversed order and rules:
‘1) A sign such as ‘la Milla de Oro’, referring to the characteristic of a product or service which is that it can be found in abundance in a single place with a high degree of value and quality, cannot constitute an indication of geographical origin, since that sign must be accompanied by a name designating a geographical place so that the actual physical space with which a strong concentration of a product or service of a high degree of value or quality is associated may be identified.
2) Article 3(1)(c) of Directive 2008/95 must be interpreted as meaning that a sign such as ‘la Milla de Oro’, referring to the characteristic of a product or service which is that such a product or service can be found in abundance in a single place with a high degree of value, is unlikely to have characteristics the use of which as a trade mark would constitute a ground for invalidity within the meaning of that provision.’
IPPT20170706, CJEU, Moreno Marin v Abadia Retuerta
C‑139/16 - ECLI:EU:C:2017:518
