Companies seeking to emphasize the uniqueness and quality of their goods by using geographical indication in the trademark should be cautious, as this might cost them a trademark registration. AS LIVIKO found themselves in this exact situation, since due to the use of geographical indication, the figurative trademark VANA TALLINN was not registered.
The first Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) dismissed the appeal against the refusal to register a figurative trademark of the famous Estonian liqueur VANA TALLINN (see above) for class 33 covering such goods as liqueurs, liqueur-based cocktails and mixed drinks”.
OHIM refused to register the mark on the basis of the article 7 of the Community Trademark Regulation regarding the geographical indication “Estonian vodka” belonging to a product category of vodka.
According to the Regulation, if a trademark consists of or contains a geographical indication, it cannot be registered. Yet, in this case, the decision seem to be controversial as its circumstances did not directly correspond to the Community Trademark Regulation. The trademark had a term “Estonian liqueur” instead of “Estonian vodka” (note that the liqueur does not contain vodka).
The expert suggested the applicant to limit the list to the goods covered by the geographical indication “Estonian vodka”, as this would prevent from the rejection of the trademark registration. However, the applicant disagreed with the idea.
The Board of Appeal upheld OHIM’s rejection, arguing that the word ‘Estonian’ is the main part of the geographical indication “Estonian vodka” and the other element, ‘vodka’, simply describes the type of a spirit drink. OHIM further noted that the liqueur and vodka are similar goods, because both are produced by distillation from the same raw materials, have similar physical appearance, are most commonly used on similar occasions and distributed via the same channels of trade, and finally, they are the subjects to the similar marketing rules.
This decision raises a lot of questions for consideration. The trademark proprietors should pay attention to the fact that when registering the European Community trademark it is not sufficient to rely solely on the Community Trademark Regulation. It is necessary to draw attention to the particular norms of law as well.
This decision has also shown that the usage of a geographical indication in a trademark can be risky, especially if the name of the country does not have a strong reputation with respect to the goods in question (e.g. Scottish whiskey), and is simply artificially included in a geographical indication. In the case described above such an inclusion of a geographical indication into the mark’s image has become an obstacle to the registration of the mark, although the word ‘Estonian’ is clearly descriptive. Therefore, in order to obtain trademark protection with respect to alcoholic beverages, we recommend to think twice before using terms, such as ‘Polish’/ ‘Polska’ or ‘Original Lithuanian’, because these references are also included in the list of protected geographical indications.