Something to w(h)ine about?

One unhappy company today must be Spanish wine grower Abadía Retuerta, which probably feels that the whole of the rest of the world is wrong. Today, in Case T 237/08 Abadía Retuerta, SA v OHIM, the General Court (Third Chamber) became the second tribunal to dismiss its appeal against the refusal of the Office for Harmonisation in the Internal Market to allow registration of its beloved trade mark CUVÉE PALOMAR for wines in Class 33. The IPKat has little doubt, given the pride and the passion with this case has been fought so far, the Court of Justice will soon have the chance to dismiss the appeal, possibly followed by the Court of the Galaxy and the Supreme Court of the Universe.

As recently as 2006 Abadía Retuerta, which owned the Pago Palomar estate, applied to register as a Community trade mark the words CUVÉE PALOMAR for wines. The examiner said "no", citing Article 7(1)(j) of the Community Trade Mark Regulation which states that

‘The following shall not be registered: … (j) trade marks for wines which contain or consist of a geographical indication identifying wines … with respect to such wines … not having that origin.’

Abadía Retuerta appealed unsuccessfully to the First Board of Appeal which recalled that, in accordance with the case law of the Court of Justice, since the European Community is a party to TRIPs, the court must interpret its trade mark legislation, as far as possible, in the light of the wording and purpose of that agreement. Comparison of Articles 22(3) and 23(2) of TRIPs showed that the latter, which was incorporated into Article 7(1)(j), constituted a lex specialis which laid down a specific prohibition on registration of geographical indications identifying wines and spirits. That prohibition was absolute and unconditional, not requiring that the use of the geographical indication in the mark for those goods to be deceptive with regard to the actual place of origin, a condition to which application of the general prohibition on registration of geographical indications referred to in Article 22(3) of TRIPS was explicitly subject.

The Board of Appeal found that el Palomar was the name of a local administrative area in Spain, in the Valencian subregion Clariano, and that it constituted under applicable Community and national law an area of production protected by the registered designation of origin ‘Valencia’. There being a high degree of similarity between the local administrative area name el Palomar and the word ‘palomar’ included in the mark applied for, its use was prohibited under Article 2(2) of Spanish Ministerial Order of 19 October 2000, since the applied-for Community trade mark had not been sought to designate wines from that area of origin. The Board of Appeal added that, while the official name of the local administrative area was ‘el Palomar’, it was ‘palomar’ alone which identified that specific area -- since recognition cannot depend on the presence or absence of the definite article ‘el’ (anyway, the local administrative area in question was identified by the name Palomar, without an article, in the Ministerial Order of 19 October 2000).

In the light of this, the Board of Appeal concluded that registration of the Community mark applied for to designate wines should be refused under Article 7(1)(j) since it contained a false geographical indication. That finding was equally applicable to the amended description of the goods covered by the application, namely ‘wines from an estate known as ‘Pago Palomar’, situated in the local administrative area of Sardón de Duero (Valladolid, Spain)’: this didn't help and was a bit of an own-goal, since it reinforced the fact that the mark applied for contained a geographical indication which did not correspond to the origin of the goods which it described, contrary to Article 7(1)(j).

Abadía Retuerta appealed further to the General Court, but to no avail. According to that Court (which gave lots more reasons than those listed below):

* EU Member States are competent to use the name of a local administrative area, a part of it or a small locality to designate a quality wine psr [produced in a specified region]. In such a case, that name cannot be used to designate products of the wine sector which do not come from that local administrative area (or part of it) or from that small locality and to which that name has not been assigned in accordance with the applicable Community and national rules. It's up to the Member States to determine, for their respective territories, the geographical indications which they want to protect.

* Community protection of geographical indications is based on the geographical indications as determined by laws of the Member States in compliance with the relevant provisions of Community law. 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.

* CUVÉE PALOMAR wine did not come from the local administrative area el Palomar and consisted of a geographical indication which identified a quality wine psr even though that wine did not have that origin. Accordingly the Board of Appeal was right to find that the mark applied for was unregistrable on the basis of the absolute ground for refusal laid down in Article 7(1)(j).

* Abadía Retuerta could not argue that, since a part of its estate contained the name Palomar, including that name in the mark applied for did not constitute a false or erroneous indication. It was irrelevant that the name was not erroneous, since the only condition for the application of the absolute ground for refusal laid down in Article 7(1)(j) is that the mark contains or consists of a geographical indication identifying a wine in respect of such wine not having that origin.

* Likewise it made no difference that the mark applied for did not include the name el Palomar but merely the word ‘palomar’. Such an interpretation of Article 7(1)(j) would clearly clash with the objective of protecting geographical indications for quality wines psr pursued by national and Community law. For the absolute ground for refusal referred to in Article 7(1)(j) to apply, it suffices that those 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, though this would not be so where 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.

* The fact that a 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 the absolute ground for refusal laid down in Article 7(1)(j).

Wine reviews: what The Passionate Foodie has to say here; Snooth here

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