Is the sign "ST ANDREWS" descriptive in relation to event organisation services, club services, vocational guidance service and book and website publication?
The EUIPO Board of Appeal considered that it was and its finding has now been upheld by the EU General Court in two linked cases.
The decisions were made in response to applications by St. Andrews Links Ltd. ("St. Andrews Links") to register the "ST ANDREWS" sign for the following classes of goods and services:
- Class 25: Clothing; Footwear; Headgear; Headwear; Sportswear;
- Class 28: Games; Stand-alone video games machines; Hand-held video games machines;
- Class 35: Retail store services; Online retail store services; Retail store services featuring clothing, games and playthings;
- Class 41: Providing on-line computer games; and
- Class 41: Arranging and conducting entertainment conferences, congresses, events, competitions and seminars; Club services (entertainment or education); Providing a website featuring information regarding conferences, congresses, events, competitions and seminars; Special event planning; Organisation of cultural events and of exhibitions for cultural or educational purposes; Publication of books, electronic books and journals on-line; Vocational guidance and instruction services (education or training advice).
The application was refused in its entirety by the EUIPO examiner on the basis that the sign was descriptive of characteristics of the relevant goods and services. The Board of Appeal overturned this finding in relation to the first four groups of goods and services listed above, leaving only the fifth group of services in contention before the General Court (the "Contested Services").
In reaching its decision, the General Court repeated the principle established by it in previous case law that geographical names should not be registrable as trade marks where:
- the names designate geographic locations that are famous or known for the category of goods or services concerned, such that the relevant public would associate those locations with those goods or services; or
- the names may be used as indications of the geographical origin of the category of goods or services concerned.
It noted that geographical names may not only indicate the quality and characteristics of the relevant goods and services but may also otherwise influence consumer tastes by associating the goods with a place that gives rise to a favourable response.
General Court decision
In this case, the sign comprised the name of a town in Scotland which is famous for golfing activities.
The General Court, and the EUIPO Board of Appeal before it, considered that the Contested Services were closely linked to golf. The relevant public (or at least the portion of it comprising golf professionals and amateurs) would therefore consider that such services, provided under the "ST ANDREWS" sign, related to golf and/ or originated from the town of St. Andrews. The fact that providers of the relevant services did not in practice use the words "ST ANDREWS" to indicate the geographic origin of their services was irrelevant – it is enough that the sign could be used in such a manner.
The General Court rejected St. Andrews Links' argument that the relevant public would attach more importance to its reputation than the fact that the contested services originated in St. Andrews. St. Andrews Links had argued in a similar vein before the EUIPO Board of Appeal that St. Andrews was famous for golf as a result its (St. Andrews Links') golf courses, particularly the "Old Course". The Board of Appeal found that there were several other major golf courses in St. Andrews that were not managed by St. Andrews Links and the General Court endorsed its finding.
The General Court's decision is unsurprising in the light of the public policy aim to ensure the free use of signs that are descriptive of the characteristics of goods and services. St. Andrews Links was unable to raise sufficient evidence before the EUIPO Board of Appeal that the words "ST ANDREWS" alone had acquired distinctiveness. While golf aficionados may sympathise with St. Andrews Links' argument that the town of St. Andrews owes its reputation for golf to the presence of its "Old Course", any feeling that it has been hard done by may be tempered by the fact that it already owns a large number of registered EUTMs for "ST. ANDREWS LINKS" and "THE OLD COURSE" covering many of the Contested Services.
What is perhaps more surprising is the distinction drawn by the EUIPO Board of Appeal between the Contested Services and those categories of goods and services in respect of which registration was allowed. It is unclear, for example, that the Contested Services of "publication of books, electronic books and journals on-line" can be more closely associated with golf than sportswear or games, or that the relevant public would consider those services to be provided from the town of St. Andrews. Conversely, the relevant public (or a portion of it) might well associate golfwear or games premised on golfing activities with the reputation of St. Andrews as a famous golfing location. The Board of Appeal had focussed its analysis on the fact that the relevant public would not consider the goods and services to be manufactured in or provided from St. Andrews. Under the General Court's reasoning, however, the registrations might nevertheless have been refused on the basis that the "ST ANDREWS" sign may influence consumer tastes by associating the relevant goods with St. Andrews.
Case ref: T-790/17 and T-791/17 XuYang Zhu