In the dispute concerning the registration of the EU figurative mark ‘Steirisches Kürbiskernöl g. g. A.’, the question before the CFI was whether a figurative mark containing figurative elements and, inter alia, the PGI symbol ‘g.g.A.’ was rightly regarded by the Board of Appeal as misleading with regard to protection as a geographical indication.
Only where Steirisches Kürbiskernöl g.g.A. is written on it, is Steirisches Kürbiskernöl guaranteed to be in it, informs the producers’ association “Gemeinschaft Steirisches Kürbiskernöl g.g.A.” (Austria) on its homepage and explicitly points out that the protected geographical indication (g.g.A., in engl: the PGI symbol) was promised to the Styrian pumpkin seed oil producers by the EU in 1996. Styria, by the way, is the second largest state of Austria, a mountainous, forested area, known for its wine and castles to many tourists.
In this context, was it permissible to apply for the Union figurative mark ‘Steirisches Kürbiskernöl g.g.A. ‘ for “pumpkin seed oil corresponding to the protected geographical indication Steirisches Kürbiskernöl” in Nice Class 29 – although the trade mark applicant Mrs Gabriele Schmid (Austria) could not prove that the Commission had approved such a trade mark use of the sign PGI for “protected geographical indications”?
This interesting question was decided by the European Court of Justice (Court of First Instance, CFI) (T-700/20) and is a good contribution to the case law on whether the PGI symbol of the European Union may be used in figurative marks without permission if other figurative elements are also included in this figurative mark.
Misleading with regard to protection as a geographical indication?
The intervener in any case, the Landeskammer für Land- und Forstwirtschaft in Steiermark (Austria), saw misleading with regard to the protection as a geographical indication in the disputed mark and filed an application for a declaration of invalidity of that mark. The trade mark applicant could not prove that she was entitled to use the PGI symbol for “protected geographical indications” for its product under trade mark law. And since the disputed trade mark incorporated the PGI symbol in its entirety and, in addition, claimed protection for the product pumpkin seed oil, which could in principle correspond to a protected geographical indication, the EUIPO Board of Appeal upheld the objection to this trade mark application and declared the disputed trade mark invalid. The trade mark applicant appealed against this decision before the CFI.
In particular, Mrs Schmid argued that the Board of Appeal had not considered in the contested decision whether the way in which the PGI symbol was integrated into the EU figurative mark ‘Steirisches Kürbiskernöl g. g. A. ‘ could lead relevant public to believe that the goods designated by that mark were endowed with the quality and protection as a protected geographical indication.
Union figurative mark ‚Steirisches Kürbiskernöl g. g. A.‘
Indeed, the CFI upheld the trade mark applicant’s argument. The EUIPO must not only examine whether the emblem in question is reproduced in whole or in part in the trade mark in which it is incorporated, the CFI explained. The various elements of which such a mark is composed must also be taken into account in that assessment.
In addition, the court added, it must be examined whether an emblem such as the PGI symbol of the EU is capable of being perceived as such by the public, in particular in view of its size and its position within such a mark. In that regard, it must be taken into account whether it has a simple or complex design of colours or shapes, whether it is complemented by other word or figurative elements or whether the other elements of the mark in question dominate the overall impression created by it.
The Board of Appeal was right to assume (under Article 7(1)(i) of Regulation No 207/2009) that the trade mark application is prohibited if, first, the emblem in question is of particular public interest (which is the case with the European PGI symbol) and, second, the competent authority has not approved that registration (which also is fact in the present case). The CFI added that this had to be understood cumulatively, but that this was also the case here.
Consumer perception is decisive
What the Board of Appeal did not examine, however, was whether the relevant consumers were actually misled. According to Article 7(1)(h) of Regulation No 207/2009, the emblems of international intergovernmental organisations, such as the European PGI symbol, are protected only if the mark containing such an emblem, taken as a whole, gives the public the impression that the product covered by that mark is protected as a geographical indication.
In other words, only if consumers assume that the oil identified by the disputed mark corresponds to the special quality of the PGI producer group “guaranteed Styrian pumpkin seed oil” can the trade mark applicant be refused trade mark registration.
The CFI therefore annulled the decision of the Board of Appeal (Case R 2186/2019-4 of September 2020) which had declared the Union figurative mark ‘Steirisches Kürbiskernöl g.g.A. ‘ invalid.
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