The General Court has rendered a decision on the possibilities of obtaining trade mark protection for a sign that contains a geographical indication of origin.
The case concerned the trade mark “SUEDTIROL” (South Tyrol) that was applied for by Internet Consulting GmbH (‘IC’) for goods in classes 35, 39 and 42. The trade mark was registered on 16 December 2011 and soon afterwards Provincia Autonoma di Bolzano-Alto Adige (‘Provincia’) filed for a declaration of invalidity. The claim was rejected by the Invalidity Decision but overturned by the Board of Appeal who decided that the trade mark was registered in violation of Article 7(1)(c) of regulation EG 207/2009 (‘Regulation’).
In particular it was held by the Board of Appeal that “südtirol” or “suedtirol” is the usual indication used by the relevant public for the most northern province of Italy which in English is called South Tyrol. Therefore, “suedtirol” should be considered as a trade mark that consists exclusively of an indication which may serve to designate the geographical origin of the services for which it was applied. Such geographical indications cannot be a trade mark, to protect the public interest to keep such indications available for use by third parties.
IC appealed the decision of the Board of Appeal and inter alia stated that Article 12(b) of the Regulation already provides sufficient protection for the public interest in this regard since, under that article, the trade mark owner is not entitled to prohibit a third party from using in the course of trade indications concerning the geographical origin of the goods or services.
The General Court first of all found that the trade mark was registered in violation of Article 7(1)(c) of the Regulation since the region of South Tyrol is well known for at least the German speaking public of the European Union and the Italian public and is renowned for its economic strength and prosperity. According to the General Court this could lead to the relevant public making a connection between the (good quality of the) services offered by IC under the trade mark and the region of South Tyrol.
The General Court also rejected IC’s arguments that Article 12 of the Regulation already provides a sufficient legal ‘safety net’ for the public interest to avoid a geographical indication being monopolized by a trade mark owner. The rationale behind that decision is that Article 12 of the Regulation does not give third parties the right to use a geographical indication as a trade mark but only guarantees that such an indication can be used in a descriptive manner as an actual indication of origin and insofar as it is used in accordance with honest practices in industrial and commercial matters. For that reason, the General Court came to the conclusion that Article 12(b) of the Regulation does not fully protect the public interest to keep available geographical indications and that the decision that the trade mark “suedtirol” was refused pursuant to Article 7(1)(c) of the Regulation should be upheld.