An application to register the figurative trade mark CAFÉ NARIÑO (right) in Spain was rejected on the ground (among others) that it conflicted with a Colombian geographical indication, "CAFÉ DE COLOMBIA", that enjoyed protection in the European Union.

How did this happen? On 30 August 2012 a private individual by the name of Eufemio García Hernández filed a Spanish trade mark application for the CAFÉ DE NARIÑO mark. The goods for which the application was filed were "coffee and artificial coffee" in class 30.

An attempt was made to persuade the applicant to withdraw the application voluntarily, drawing his attention to the fact that Nariño is an important coffee-growing region of Colombia and to the relevant legal prohibitions. The applicant replied that he was unaware that the word Nariño was protected in any way and that he preferred, in any event, to let the Spanish Patent and Trade Mark Office (SPTO) decide on the registrability of his application.

In November 2012 an opposition was filed by the Federación Nacional de Cafeteros de Colombia (Colombian Coffee Growers Federation). The opposition was based on the absolute prohibitions on the registration of marks which are

  • descriptive, in the event that the goods covered by the contested mark originated in Nariño,
  • misleading, in the event that the goods did not originate in Nariño,
  • or contrary to law, specifically to Council Regulation 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (in force at the time), given that Nariño is a coffee-growing region included within the protected geographical indication (PGI) "CAFÉ DE COLOMBIA".
The SPTO finally rejected the application, stating in the grounds for its decision that the opposition was upheld, inasmuch as Nariño is a department belonging to the PGI "CAFÉ DE COLOMBIA" registered in the European Union. No appeal was filed and the decision to reject the application thus became final.
 
Souce: Miguel Angel Medina (ELZABURU), to whom Class 46 gives its thanks