Case T-237/08

Abadía Retuerta, SA

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Application for the Community word mark CUVÉE PALOMAR – Absolute ground for refusal – Trade marks for wines containing geographical indications – TRIPs Agreement – Article 7(1)(j) of Regulation (EC) No 40/94 (now Article 7(1)(j) of Regulation (EC) No 207/2009))

Summary of the Judgment

1.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks for wines or spirits containing or consisting of geographical indications identifying wines or spirits not having that origin – Definition

(TRIPs Agreement, Art. 23; Council Regulation No 40/94, Art. 7(1)(j))

2.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks for wines or spirits containing or consisting of geographical indications identifying wines or spirits not having that origin

(Council Regulations Nos 40/94, Art. 7(1)(j), and 1493/1999, Art. 52)

3.      Agriculture – Common organisation of the markets – Wine – Quality wines produced in specified regions – Community protection of geographical indication – Conditions

(Council Regulation No 1493/1999, Arts 52(1), first para., and 54(4) and (5))

4.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks for wines or spirits containing or consisting of geographical indications identifying wines or spirits not having that origin – Deceptive nature – Likelihood of confusion – No effect

(Council Regulation No 40/94, Art. 7(1)(j))

5.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks for wines or spirits containing or consisting of geographical indications identifying wines or spirits not having that origin – Definite or indefinite articles – No effect

(Council Regulation No 40/94, Art. 7(1)(j))

6.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Trade marks for wines or spirits containing or consisting of geographical indications identifying wines or spirits not having that origin – Name benefiting from a registered designation of origin being unknown to the general public or the relevant class of persons – Word with several meanings – No effect

(Council Regulation No 40/94, Art. 7(1)(j))

1.      Although the provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) do not have direct effect, it is nevertheless true that the trade‑mark legislation, including Article 7(1)(j) of Regulation No 40/94 on the Community trade mark, must, as far as possible, be interpreted in the light of the wording and purpose of that agreement.

The expression ‘geographical indication identifying wines’, which appears in Article 7(1)(j) of Regulation No 40/94, differs, in the French version, from that which appears in Article 23 of the TRIPs Agreement. There are however two other languages which are authentic under the Final Act Embodying the Results of the Uruguay Round of Multilateral Trade Negotiations, the text of which was drafted in French, English and Spanish. Thus the words ‘geographical indication identifying wines’ are used both in Article 23 of the TRIPs Agreement and in Article 7(1)(j) of Regulation No 40/94 in the English version of those provisions. In addition, the words ‘indicación geográfica que identifique vinos’ are used in the Spanish version of Article 23 of the TRIPs Agreement and the words ‘indicación geográfica que identifique el vino’ in the Spanish version of Article 7(1)(j) of that regulation. Consequently, Article 7(1)(j) of that regulation refers to geographical indications identifying wines, not to geographical indications ‘intended’ to identify wines.

(see paras 67-72)

2.      The word sign CUVÉE PALOMAR sought to be registered as a Community trade mark for ‘wines’ in Class 33 under the Nice Agreement is blocked by the absolute ground for refusal in Article 7(1)(j) of Regulation No 40/94 on the Community trade mark because of the existence of the registered designation of origin ‘valencia’.

Under Spanish law the area of production protected by the registered designation of origin ‘valencia’ consists of, inter alia, the sub-region Clariano, which includes, inter alia, a local administrative area with the name el Palomar.

The name el Palomar thus constitutes a geographical indication for a quality wine produced in specified regions (psr) under Spanish law and, accordingly, under Article 52 of Regulation No 1493/1999 on the common organisation of the market in wine, which provides that, if a Member State uses the name of a specified region, including the name of a local administrative area, to designate a quality wine psr, that name may not be used to designate products of the wine sector not produced in that region and/or products not designated by the name in accordance with the provisions of the relevant Community and national rules.

As the name el Palomar is a geographical indication for a quality wine psr, it therefore constitutes a geographical indication identifying wines within the meaning of Article 7(1)(j) of Regulation No 40/94.

The wine in respect of which the Community trade mark is sought does not come from the local administrative area el Palomar. The mark applied for therefore consists of a geographical indication which identifies a quality wine psr even though the wine in respect of which the mark is sought does not have that origin.

(see paras 82, 86-88, 110-112)

3.      The Community protection of geographical indications which is established by Regulation No 1493/1999 on the common organisation of the market in wine is based on the geographical indications such as they are determined by laws of the Member States in compliance with the relevant provisions of that regulation. That protection does not result from an autonomous Community procedure or even from a mechanism under which the geographical indications recognised by Member States are incorporated in a binding Community measure.

The only obligations which result from Article 54(4) and (5) of Regulation No 1493/1999 are for the Member States to forward the list of quality wines produced in specified regions (psr) which they have recognised to the Commission, stating, for each of them, details of the national provisions which govern their production and manufacture, and for the Commission to publish that list in the C series – not the L series – of the Official Journal.

As the protection of geographical indications originates in the laws of the Member States, it follows that the enforceability against third parties of national measures by which a Member State designates the name of a specific region, the name of a local administrative area or a part thereof, or a locality as a quality wine psr, pursuant to the first subparagraph of Article 52(1) of Regulation No 1493/1999, results from the publication of those provisions in the Official Journal of the Member State which adopts them.

(see paras 97-99)

4.      The absolute ground for refusal laid down in Article 7(1)(j) of Regulation No 40/94 on the Community trade mark applies without it being necessary to consider whether the marks for which registration are sought are of such a nature as to deceive the public or not, or whether they lead to a likelihood of confusion regarding the origin of the product.

(see para. 120)

5.      For the absolute ground for refusal referred to in Article 7(1)(j) of Regulation No 40/94 on the Community trade mark to apply, it suffices that the marks contain or consist of elements which enable the geographical indication in question to be identified with certainty, without it being necessary to consider the definite or indefinite articles which may possibly form a part of them. It would only be otherwise if the geographical indication consisted of a name of a place containing an article which is inseparable from that name and which gives that name its own, autonomous meaning.

(see paras 125-126)

6.      In so far as registration of the mark applied for must be refused under Article 7(1)(j) of Regulation No 40/94 on the Community trade mark on the sole ground that that mark contains or consists of a geographical indication identifying wines in respect of such wines not having that origin, it follows that the fact that the name which benefits from a registered designation of origin is unknown to the general public or the relevant class of persons, or that it has many meanings which moderate its geographically indicative nature, is irrelevant for the application of that absolute ground for refusal.

(see para. 131)