Case No. IP-2015-000146

The inherent character of a trade mark – designation of geographical origin 13.Art.7(1)(c) provides:“7(1) The following shall not be registered: … (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering the service, or other characteristics of the goods or service. ”14.Mr Hicks referred primarily to Windsurfing Chiemsee Productions- und Vertriebs GmbH v Boots- und Segelzubehör Walter Huber, Joined Cases C-108/97 and C-109/97, EU:C:1999:230, in which the European Court of Justice (“ECJ”) considered whether a trade mark consisting of the name of a lake in Bavaria was subject to exclusion from registration under art.3(1)(c) of Council Directive 89/104/EEC, the trade mark directive then in force. Art 3(1)(c) is identical in terms to art.7(1)(c) of the Regulation. It is sufficient for me to quote the first operative answer of the ECJ to the question referred (the answer is in the same terms as paragraph 37 of the judgment):“1. Article 3(1)(c) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that: (i) it does not prohibit the registration of geographical names as trade marks solely where the names designate places which are, in the mind of the relevant class of persons, currently associated with the category of goods in question; it also applies to geographical names which are liable to be used in future by the undertakings concerned as an indication of the geographical origin of that category of goods;(ii) where there is currently no association in the mind of the relevant class of persons between the geographical name and the category of goods in question, the competent authority must assess whether it is reasonable to assume that such a name is, in the mind of the relevant class of persons, capable of designating the geographical origin of that category of goods;(iii) in making that assessment, particular consideration should be given to the degree of familiarity amongst the relevant class of persons with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods concerned;(iv) it is not necessary for the goods to be manufactured in the geographical location in order for them to be associated with it.”15.Mr Hicks also referred to the judgment of the Court of First Instance, Nordmilch eG v OHIM (“OLDENBURGER”), T-295/01, EU:T:2003:267. The Court said (at [43]) that the actual geographical origin of the goods in question does not matter. It is enough that the average consumer perceives the sign in question as an indication of geographical origin. This is consistent with paragraph 1(iv) of the ruling in Windsurfing.16.Miss Himsworth referred to Peek & Cloppenburg KG v OHIM, T-379/03, EU:T:2005:373; [2006] ETMR 33. In that case the word mark was CLOPPENBURG for retail services. Cloppenburg is a town in Lower Saxony where the applicant, a supplier of retail services, was based. The Court of First Instance cited Windsurfing and Oldenburger and considered how OHIM should assess a mark alleged to designate a geographical origin within the meaning of art.7(1)(c):“[38] In making that assessment the Office is bound to establish that the geographical name is known to the relevant class of persons as the designation of a place. What is more, the name in question must suggest a current association, in the mind of the relevant class of persons, with the category of goods or services in question, or else it must be reasonable to assume that such a name may, in the view of those persons, designate the geographical origin of that category of goods or services. In making that assessment, particular consideration should be given to the relevant class of persons’ degree of familiarity with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods or services concerned (see, by analogy, Windsurfing Chiemsee, paragraph 37 and paragraph 1 of the operative part).”17.Miss Himsworth also relied on the judgment of the Court of Appeal in JW Spear & Sons Ltd v Zynga Inc [2015] EWCA Civ 290; [2015] FSR 19, drawing attention to the passage of that judgment in which Floyd LJ, with whom Patten and Tomlinson LJJ agreed, considered (at [73] to [83]) the judgments of the CJEU in Agencja Wydawnicza Technopol sp zoo v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), C-51/10 P, EU:C2011:139; [2011] ETMR 34 and OHIM v Wm Wrigley Jr Co (“DOUBLEMINT”), C-191/01 P, EU:C:1999:230; [2004] RPC 18. Floyd LJ said that the issue under art.7(1)(c) is whether the average consumer would have immediately perceived at the relevant date, without thought or explanation, that the trade mark in issue designated a characteristic of the relevant goods or services.18.It important to bear in mind that neither in Spear v Zynga, nor in Technopol or in Doublemint was the court concerned dealing with a mark alleged to designate a geographical origin. It is hard to reconcile a requirement of immediate perception on the part of the average consumer that the mark designates a geographical origin with paragraphs (ii) and (iii) of the ECJ’s answer in Windsurfing.