Author: Kaie Puur, Patent Attorney at RestMark Metida, Maria Silvia Martinson, Lawyer at RestMark Metida
Every once in a while, some company decides to submit an application for the registration of a trademark which consists of a combination of an Estonian geographical name and a generic name of the product. Such trademarks seem to be more often used in food industry. Will or will not such a trademark be registered is a disputed question for the applicants as the practice of the Estonian Patent Office is quite incoherent in this point.
The main function of a trademark is to distinguish the goods of a person from other similar types of goods of other persons. Therefore, a question arises – can a trademark consisting of an Estonian geographical name and a generic name of the product distinguish the goods of one person from the similar goods of another person? How distinctive is distinctive enough for trademarks consisting only of an Estonian geographical name and a generic name of the product?
The key regulation revolving around the topic is the Trade Marks Act § 9 section 1 points 2, 3 and 6, which state the following. Legal protection is not granted to signs:
- which are devoid of any distinctive character (p 2);
- which consist exclusively of signs or indications which designate the kind, quality, quantity, intended purpose, value or geographical origin (p 3);
- which are of such a nature as to mislead the consumer to the kind, quality, quantity, intended purpose, value or geographical origin of the goods (p 6).
The above provisions do not apply if the trademark has acquired a distinctive character or if it is a well-known trademark, however the Patent Office’s practice with said exceptions will not be analysed in this article.
According to the beforementioned provisions, it seems easy to assume that whenever a person submits an application for the registration of a trademark consisting only of a geographical name and a generic name of the product for which the trademark is being registered, it will be denied registration without hesitation. Even so, that has not stopped companies from trying to register such trademarks.
For example, in 2004 the Estonian Patent Office refused to register the mark „RAKVERE JUUST“ (which translates to Rakvere cheese) for dairy foods etc – „Rakvere“ therefore being the geographical name and „cheese“ a generic name of the product relating to the registration. The applicant did not agree with the Patent Office and contested the refusal in the Board of Appeal of Industrial Property. The Board agreed with the Patent Office and found the combination of words also non-distinctive. Additionally, the Board stated that if the combination of words (even if the words are not protectable separately) would create a distinctive functional trademark, it could be registered and the non-distinctive words would not become subject to protection. Therefore it is important to distinguish between a non-distinctive combination of words from a combination that also prefigures a new meaning in the eyes of the consumer.
The same problems arose with word marks „PÄRNU LEIB“ (translates to Pärnu bread) and „AHJA JUUST“ (translates to Ahja cheese) respectively in 2000 and 2004, and were therefore declined registration.
However, the practice has not always been the same. Even in the beginning of the 2000s the Estonian Patent Office registered several word marks consisting only of a geographical name and a generic name of the product. Many of these registrations are still in force, for example: „KURESSAARE LEIB“ (Kuressaare bread), „SAAREMAA LEIB“ (Saaremaa bread) and „TALLINNA PEENLEIB“ (Tallinn bread).
Interestingly enough, somewhat all of the aforementioned registered trademarks have one thing in common: all of the products are being produced in the same areas as the geographical name in the trademark refers to. Could that be the key for approval to register?
In 2014, TNS Emor conducted a survey among Estonian consumers about food labelling. The findings supported the belief that whenever the label also consists of the word „Estonian“, most consumers automatically assume that the product was either made in Estonia or the primary ingredient of the product is Estonian. Based on analogy, it can be argued that whenever a consumer notices a geographical name on the label, he/she creates a certain link between the name and the product (such as with „RAKVERE JUUST“).
Therefore, if a trademark only consists of a geographical name and a generic name of the product, but the food/primary ingredient is not produced in that region, it could possibly mislead the consumer such as the Trade Marks Act § 9 section 1 p 6 states. But if the food/primary ingredient is actually produced in that region, § 9 section 1 p 3 is applicable and therefore could not be registered as well, since it is descriptive and due to that also devoid of any distinctive character (§ 9 section 1 p 2). Additionally, even when a product is being produced in the area the trademark refers to, trademarks can be easily assigned to another owner, who might not continue the production in the same region, which would then again mislead the consumer.
This, however, is not a final deduction, since the European Court also has a say in this. In its many decisions (amongst them the 25.10.2005 decision T-379/03 Cloppenburg) the European Court has stated that: „The regulation does not in principle preclude the registration of geographical names which are unknown to the relevant class of persons – or at least unknown as the designation of a geographical location – or of names in respect of which, because of the type of place they designate, such persons are unlikely to believe that the category of goods concerned originates there or was conceived of there.“
Interpreting the decision in accordance with the The WIPO Intellectual Property Handbook, a conclusion can be made that trademarks which also consist of a geographical name can be distinctive and thus registered if the sign either refers to a practically unknown location or refers to an area where a consumer wouldn’t expect the product to be manufactured. Therefore word trademarks with geographical names are rarely distinctive, since (as it also derives from the aforementioned survey) on average, consumers associate the label or the trademark with the location it refers to.
The main difference between registering word marks and combined marks is that even when a word mark consisting of a geographical name and a generic name of the product may not be distinctive, sufficient styling elements could do the trick and therefore a combined mark would be allowed to register.
The Estonian Patent Office seems to have adopted the aforementioned concept, therefore determining every time whether the styling is sufficient to create a new meaning (not just two or more descriptive words, but a whole) in the eyes of the consumer.
For example, the following combined mark (translates to estonian cheese) was not registered in 1995, since it was not considered distinctive enough:
But these combined marks were considered distinctive because of the sufficient styling:
registered in 1997, translates to Tartu milk
registered in 2000, translates to Põltsamaa Estonian cheese
registered in 2009, translates to Estonian white bread
The latest registration regarding a geographical name and a generic name of the product is a 2015 registration that translates to Pärnu bread:
The Estonian Patent Office has considered coloured text and a slightly coloured background sufficient to create a distinctive combined mark.
The practice of the Estonian Patent Office has been unsteady at best. At first, marks consisting of a geographical name and a generic name for the product were registered even as word marks, but after the year 2000 the Patent Office had higher demands and registering aforementioned word marks was seemingly impossible. Due to that many distinctively styled combined marks were registered. However, the registration of the „PÄRNU LEIB + figure“ trademark suggests that the Patent Office has recently softened their demands yet again.
So, what to take into account and expect when planning to register a trademark consisting of a geographical name and a generic name of the product?
Firstly, word marks consisting solely of a geographical name and a generic name of the product are rarely distinctive enough for registration. It is possible only if the combination of words creates a new meaning in the eyes of the consumer (therefore making it distinctive), the location itself is virtually unknown to consumers or the consumers would not expect the product to be manufactured in that area.
Secondly, with combined marks, things are a little less complex. If the styling is sufficient to create a distinctive mark, it will most likely be registered. Considering the recent practice of the Patent Office, even mild styling might be enough.
However, even after succeeding to register a combined mark, it is important to keep in mind that the non-distinctive parts of the mark shall not be subject to protection, i.e. the verbal part which is not registrable in itself does not become protectable even when pieced together with some design elements within a combined mark and is therefore usable for other interested parties.