The Cancellation Division of OHIM on May 25, 2013 upheld the request by Grana Padano Consortium (“the Consortium”), owner of the collective Community trademark “Grana Padano”, to declare invalid the Community trademark “Cuore di Formaggio – Grana Italiana”, registered by a German company in relation to cheese and cooking utensils (hereunder represented).
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The Cancellation Division stated that the use of the term “Grana”, also not combined with “Padano”, evocates the registered designation of origin “Grana Padano”.
For this reason, pursuant to articles 13 and 14 of the EC Regulation no. 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (recently replaced by EC Regulation no. 1151/2012), the Cancellation Division of OHIM stated that the contested trademark could not be registered for the same products covered by the designation of origin. Therefore, OHIM invalidated such trademark in connection with cheese products.
Furthermore, the Cancellation Division invalidated the disputed trademark also in connection with the other goods (i.e. cooking utensils), stating that the presence of the term “Grana” is sufficient to link the trademarks in the eyes of the consumers not only in relation to cheese but also to different goods. This because “Grana Padano” has gained a reputation in the relevant territory of the Community and therefore, according to art. 8(5) EC Regulation no. 207/2009, enjoys protection also for dissimilar goods.