On July 31 2008 Sogepi Consulting y Publicidad SL applied to the Office for Harmonisation in the Internal Market (OHIM) for registration of a Community trademark consisting of the word ESPETEC to distinguish "raw meat sausages and dried pork" (Class 29).
This trademark application was refused on January 8 2010 on the basis of Articles 7.1(b) and (c) and 7.2 of the EU Community Trademark Regulation (207/2009), as the OHIM examiner considered that the word 'espetec' is descriptive and devoid of distinctiveness.
Article 7 of the regulation, which deals with grounds for refusal, states:
"1. The following shall not be registered:
(b) trade marks which are devoid of any distinctive character;
(c) 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 of
rendering of the service, or other characteristics of the
goods or service…;
2. Paragraph 1 shall apply notwithstanding that the grounds of
non-registrability obtain in only part of the Community.
3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark
has become distinctive in relation to the goods or services for
which registration is requested in consequence of the use which
has been made of it."
By a writ of March 5 2010, Sogepi filed an appeal to OHIM against this decision.
The appeal was dismissed on November 12 2010. OHIM decided as follows:
- In Catalan, the word espetec means 'salami' (ie, long narrow sausages similar to salami, typical of Catalonia); therefore, in accordance with Articles 7.1(b) and (c), the word 'espetec' was descriptive and devoid of distinctiveness for the type of product in question; and
- The applied-for mark had not acquired distinctiveness through use, so it could not be registered on the basis of Article 7.3.
Sogepi appealed to the General Court, alleging infringement of the above-mentioned articles.
Although the original etymological meaning of the word 'espetec' is descriptive, according to a Catalan dictionary consulted by Sogepi, it seems that this term not only means 'salami', but also has four other meanings. In addition, it does not appear in the dictionary as a synonym of 'salami'.
Catalan is not an official language of the European Union. In this regard, Sogepi relied on the European Court of Justice's June 22 2006 judgment in Storck v OHIM (C-25/05P).
Since 'espetec' does not mean anything in Spanish – an official EU language – OHIM could not validly conclude, referring only to a Catalan dictionary, that the applied-for mark was descriptive.
In relation to Article 7.3, Sogepi also argued the distinctive character acquired by the sign 'espetec' through use in relation to the goods to which it applied. Sogepi pointed out that in order to prove acquired distinctiveness of a mark for the purposes of Article 7.3, evidence of the isolated use of the mark in question cannot be required, as OHIM claimed.
Registration of a word mark will be refused under Article 7.1(c) of the Community Trademark Regulation if at least one of its possible meanings designates a characteristic of the relevant goods or services. As Sogepi itself had recognised, the term 'espetec' was part of the Catalan language long before its product had been introduced onto the market.
The decision in Storck points out that the 'part' of the European Union referred to in Article 7.2 may constitute, where appropriate, one member state only. What cannot be inferred from the judgment is that this 'part' cannot correspond to a smaller territory than that of a member state. The objective of Article 7.2 is to prevent the registration of a sign due to an existing refusal in one part of the European Union, which may be a part of one or more member states.
The conclusion about the descriptive nature of the term 'espetec' rested not only in the presence of the word in the Catalan dictionary, but also on the following:
- a November 12 1993 judgment of the Spanish Supreme Court which confirmed the nullity of the Spanish mark ESPETEC because it designated a type of Catalan sausage; and
- a July 1 2005 order of the Generalitat of Catalonia which included espetec on a list of traditional local pork products made by butchers.
As regards the violation of Article 7.3, the court held, in accordance with OHIM, that it had not been established that the mark had acquired distinctiveness through use. In this regard, the court stated that although OHIM found that the isolated use of the mark had not been sufficiently demonstrated, OHIM also examined its use as part of other trademarks of the applicant which formed part of the Casa Tarradellas brand (a Catalan food company, of which Sogepi owned the CASA TARRADELLAS mark), and correctly concluded that the distinctiveness of the sign espetec could not be established.
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