This article first appeared in World Trademark Review Daily

In Case R 1650/2022-2, the EUIPO’s Second Board of Appeal has dismissed an appeal against a decision refusing protection to a collective mark under Article 76(1) of Regulation 2017/1001, on the ground that it did not meet the requirements under Articles 7(1)(b) and (2) of the regulation.

Background

Consorzio Vino Chianti (hereafter ‘the Consorzio’) filed a collective trademark application for the following sign, claiming protection for “wine complying with the specifications of the protected and guaranteed designation of origin ‘Chianti’” in Class 33:

The examiner issued a provisional refusal on the ground that the mark was devoid of any distinctive character in relation to the claimed goods. Despite the Consorzio’s arguments in support of distinctiveness, the decision was confirmed on the following grounds:

• EU collective marks must be capable of distinguishing the goods of the association’s members from those of other undertakings. The relevant public would perceive the sign as a non-distinctive indication, simply referring to wines of the protected designation of origin (PDO) ‘Chianti’, which have been selected and have a higher quality. The sign was unable tofulfil its function of designating a collective commercial origin
• The typeface was simple and unable to identify a specific company origin. Evidence to prove that consumers will link thecolour red to the Consorzio was insufficient.

The Consorzio appealed against the decision, requesting its annulment on the following grounds:

• The word element ‘Chianti’ coincides with the PDO ‘Chianti’, which is distinctive and capable of identifying the goods asoriginating from the companies operating in the relevant area and associated with the Consorzio.
• ‘Gran Selezione’ would not be considered as merely laudatory information by the relevant public. The regulations of use forthe collective mark expressly refer to the product specification of the “Protected and Guaranteed Designation of Origin‘Chianti’” and to the Consolidated Text on Vine and Wine, Law No 238/2016. The trademark unequivocally identified aparticular type of wine originating from undertakings associated with the Consorzio.
• The collective mark had a graphic characterisation and the simple typeface was not necessarily devoid of distinctivecharacter.

Decision

The appeal was found admissible but unfounded for the following main reasons:

• The distinctive character of EU collective trademarks must not be assessed differently from that of individual trademarks.
• Article 74(2) does not constitute an exception to the distinctiveness requirements. An association applying for an EUcollective mark must ensure that the sign has elements enabling the consumer to distinguish the goods of its members fromthose of others.
• In accordance with the provisions of Article 76(1), in conjunction with Article 7(1)(b), an EU collective mark must be refusedif it is not inherently distinctive.
• The sign did not consist merely of a protected geographical indication, but combined a PDO (‘Chianti’) with a manifestlylaudatory expression (‘Gran Selezione’). The sign as a whole would be perceived by the relevant public – namely, Italianconsumers – as purely laudatory.
• The figurative elements were so minimal that they were incapable of conferring the minimum degree of inherentdistinctiveness on the trademark.
• The essential function of a geographical indication is to guarantee to consumers the geographical origin of the goods and itsinherent qualities, while the essential function of a collective mark is to guarantee the collective commercial origin of thegoods, and not their collective geographical origin.
• The PDO ‘Chianti’ included in the collective mark was incapable of conferring distinctiveness on it.
• The graphic elements were indisputably simple and had a negligible impact on the resulting overall impression.