ECTA POSITION PAPER Opposability of collective … of collective marks identifying Geographical Indications 2 Summary Trying to recommend a policy on the enforcement of geographically

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Brussels, 9 November 2016

ECTA POSITION PAPER

Opposability of collective marks identifying Geographical

Indications

Introduction

In a way, the collective marks are the “parents pauvres” of the EU trade mark system. Unlike

individual or certification marks, they are badly defined in the Regulation, they were

disregarded by the legal reform, and they have not been promoted by the EUIPO and by

users.

As part of its contribution to the overall improvement of the Office practice, ECTA – and in

particular its Geographical Indications Committee - is willing to pay a closer attention to the

EU collective marks, and to assist the EUIPO in fulfilling legal gaps and defining a consistent

registration and enforcement policy.

The first area of interest is that of EU collective marks identifying geographical indications.

While the Regulation expressly allows the registration of these signs in spite of their purely

descriptive character, there are strong doubts as to how they can be enforced, in practice.

This will be the subject-matter of this position paper.

Table

Summary p. 2

The relevant legal provisions p. 3

Criticism of the law p. 4

EU Collective marks identifying geographical indications: the landscape p. 4

Analysis of the case law on the enforcement of EU-GIs coll. Marks p. 6

Comments on the case law p. 13

Conclusions – comments and recommendations of ECTA p. 14

Opposability of collective marks identifying Geographical Indications

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Summary

Trying to recommend a policy on the enforcement of geographically descriptive collective

marks is a difficult task, for several reasons.

First, this is an area where there is little case law, and where research is made difficult

because no database provides for case law searches based on the nature of a trade mark.

Second, the legal framework is deficient, for several reasons: it is well-known that the

definition of collective marks in the EUTM is incomplete. It is also the opinion of ECTA that

the definition provided does not give sufficient consideration to the fact that purely

geographically descriptive terms can be registered as collective marks. This should have an

impact on the definition of their essential function, and consequently on their opposability.

Third, when reading the case law of the EUIPO and of the GC, one sense that the decision

takers are reluctant to give due consideration to the protection that these geographically

descriptive marks deserve. This is partly understandable because this is a situation where

the barrier with geographical indications, as such, is very theoretical. From the perspective of

the public, a GI will always be perceived as a GI, and it is therefore artificial to refer to the

perception of these signs as trade marks.

ECTA is convinced that, if the legislator has deemed appropriate to open trade mark rights to

GIs, then these rights should be granted the corresponding protection. This implies

considering that these marks are vested with a least a normal distinctive character, adapting

the definition of their essential function, and adapting the concept of likelihood of confusion.


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The relevant legal provisions

For the purpose of this position paper, these are the relevant provisions of the EUTMR, as

modified by Regulation 2015/2424:

Article 66

EU collective marks

1. A European Union collective mark (‘EU collective mark’) shall be an EU trade mark which

is described as such when the mark is applied for and is capable of distinguishing the goods

or services of the members of the association which is the proprietor of the mark from those

of other undertakings. Associations of manufacturers, producers, suppliers of services, or

traders which, under the terms of the law governing them, have the capacity in their own

name to have rights and obligations of all kinds, to make contracts or accomplish other legal

acts and to sue and be sued, as well as legal persons governed by public law, may apply for

European Union collective marks (‘EU collective marks’).

2. In derogation from Article 7(1)(c), signs or indications which may serve, in trade, to

designate the geographical origin of the goods or services may constitute EU collective

marks within the meaning of paragraph 1. A collective mark shall not entitle the proprietor to

prohibit a third party from using in the course of trade such signs or indications, provided he

uses them in accordance with honest practices in industrial or commercial matters; in

particular, such a mark may not be invoked against a third party who is entitled to use a

geographical name.

3. The provisions of this Regulation shall apply to EU collective marks, unless Articles 67 to

74 provide otherwise.

Article 8

Relative grounds for refusal

1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall

not be registered:

(a) if it is identical with the earlier trade mark and the goods or services for which registration

is applied for are identical with the goods or services for which the earlier trade mark is

protected;

(b) if because of its identity with, or similarity to, the earlier trade mark and the identity or

similarity of the goods or services covered by the trade marks there exists a likelihood of

confusion on the part of the public in the territory in which the earlier trade mark is protected;

the likelihood of confusion includes the likelihood of association with the earlier trade mark.

(…)


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5. Upon opposition by the proprietor of a registered earlier trade mark within the meaning of

paragraph 2, the trade mark applied for shall not be registered where it is identical with, or

similar to, an earlier trade mark, irrespective of whether the goods or services for which it is

applied are identical with, similar to or not similar to those for which the earlier trade mark is

registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in

the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in

the Member State concerned, and where the use without due cause of the trade mark

applied for would take unfair advantage of, or be detrimental to, the distinctive character or

the repute of the earlier trade mark.

Criticism of the law

Prior to analysing the case law of the EUIPO and the GC, we note the following:

- The definition of collective marks, as provided for in Article 66.1, is deficient. Indeed, there

is no definition of collective marks owned by legal persons of public law, and this has raised

difficulties in the past.

- The Regulation provides a single definition of the essential function of a collective mark

owned by an association: Article 66.1 simply indicates that these signs are capable of

distinguishing the goods and services of the members of the association. Therefore, there is

no express specificity, in the definition of collective marks, with respect to those signs which

are descriptive of the geographical origin of the goods. This is missing: when confronted with

a sign which corresponds to a geographical indication, the public perceives it as it is, i.e. a

geographical indication, and not as a sign which identifies the goods of the members of such

or such association.

- The Global remittance to the rules governing individual marks, as provided for in Article

66.3 is probably excessive. At least, it is not adapted to those collective marks which identify

geographical indications.

- The legal reform concluded in 2015 has not addressed these issues. Besides, it has

excluded geographical indications from the newly implemented certification marks. This is

regrettable: if the regulator believes that geographical indications can be the subject of a

trade mark registration in the European Union, then clearly the certification scheme is more

adapted than the collective scheme.

EU Collective marks identifying geographical indications: the landscape

Whether collective marks are an appropriate form of protection of GIs or not is not the

subject of this paper. Still, it is certainly true that collective marks can help reinforcing the

rights over these words, and their logos, which have a strong economic value. Trade marks

provide additional opportunities to innovate and as such can provide a useful complementary

protection.


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ECTA does not have statistics on the number of EU collective marks identifying geographical

indications. This figure is certainly low, and overall collective marks account for a small

portion of the EU trade mark system. We have the feeling, though, that the proportion of

geographical indications filed as collective mark is growing in recent years. This may be the

consequence of the case law which – rightly - considers that the use of a sign as a

geographical indication does not amount to use as an individual trade mark. Associations of

producers, and their representative, might therefore be more aware of the risk of registering

geographical terms as individual trade marks. It would also appear, at first sight, that a

majority of applicants correspond to producers of Southern European countries, such as

Spain and Italy. In these countries, it is more customary to combine the sui generis protection

and the trade mark registration.

Many geographical indications filed as collective marks are combined with figurative

elements. This is logical as a PDO/PGI registration does not provide express protection to

logos. Some collective marks are also registered when a sui generis scheme is not available.

Below are a few examples:

15061849

CONSEJO REGULADOR DE

LA INDICACIÓN

GEOGRÁFICA PROTEGIDA

CÍTRICOS VALENCIANOS

“Fresh fruits, Specifically citrus fruit that

complies with the specifications of the

protected geographical indication

Cítricos Valencianos.”

14260269 Consorzio di Tutela della

Finocchiona

“Preserved meat, Sliced meat, Pork

preserves, Pork preserves, Processed

meat-based products in conformity with

the guidelines of the protected

geographical indication "Finocchiona".”

13978358 CONSORZIO DEL

PROSCIUTTO DI MODENA

“Ham produced in accordance with the

requirements of the protected

designation of origin "Prosciutto di

Modena".”

14666689

SYNDICAT DES

PRODUCTEURS DE

PROMOTION ET DE

PROPAGANDE DU PINEAU

DES CHARENTES

« Liqueur wine with the protected

designation of origin Pineau des

Charentes.”

260760

SYNDICAT DES

PROPRIETAIRES

VITICULTEURS DE

CHATEAUNEUF-DU-PAPE

“Wine with special guarantee of the

genuiness "Châteauneuf-du-Pape" .”

Still, a relevant portion of geographical indications are filed as pure word marks. These are a

few examples:


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FUET DE VIC 14882658 CONSELL REGULADOR IGP

LLONGANISSA DE VIC

“Fuet (salchichón) procedente de la zona

geográfica de la Plana de Vic.”

PROSCIUTTO DI PARMA 14533236 CONSORZIO DEL

PROSCIUTTO DI PARMA

“Preparations made from cereals, Pasta

containing stuffings, Ravioli, Dumplings,

Filled bread rolls, Quiches, Salted tarts,

All of the aforesaid goods being filled

with prosciutto produced in accordance

with the requirements of the protected

designation of origin 'Prosciutto di

Parma' and certified as such.”

POIVRE DE KAMPOT 8497406 Association de Promotion du

Poivre de Kampot “Kampot pepper”

ICHEON RICE 8487589 Icheon Rice Administration

Headquarters “Rice”.

COLLI SCALIGERI 15298466

CONSORZIO TUTELA VINI

SOAVE E RECIOTO DI

SOAVE

“Wine”

Analysis of the case law on the enforcement of EU collective marks identifying

geographical indications

Preliminary remarks

1 - On the identification of the nature of the trade marks in the practice of the

EUIPO

This issue was raised in general terms in a letter sent by ECTA to the Executive Director of

the EUIPO, on 21 May 2016. Unfortunately, there are still decisions where the impact of the

collective nature of an earlier mark is not assessed, including on appeal level (see BoA

09/11/2015, R2652/2014-4).

In some cases the Office might have doubts as to the nature of a trade mark which is

invoked by a party in an opposition or cancellation proceeding. This happened for instance in

BoA 05/02/2016 R2897/2014-5, BOSQUE VERDE, where the Board considered that the

opponent’s marks were of individual nature, failing any indication to the contrary by the

opponent. ECTA believes, however, that in similar circumstances the Office should make a

specific inquiry with the party concerned, in order to lift any doubts.


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2 - On the research of case law

Research in this field is quite difficult because the database of the EUIPO on case law does

not contain specific entries based on the nature of trade marks (and neither does the private

database DARTS IP, although this is of course not the responsibility of the Office).

Implementing these search criteria would be a great improvement for users, and possibly

also for the decision takers of the Office.

Case law of the General Court

GC, 02/10/2015, T-627/13, T-624/13, T-625/13, T-626/13

DARJEELING

EU coll. marks 4 325 718

DARJEELING

(and variations)

41 In the present case, it is not disputed that the word element ‘darjeeling’ may serve, in trade, to designate the geographical

origin of the product covered by the earlier trade marks. That finding cannot be undermined by OHIM’s argument based on the

possible perception of that word by part of the public, which would not recognise ‘darjeeling’ as a geographical name. However,

while it is true — as the applicant rightly argues — that the essential function of a geographical indication is to guarantee to

consumers the geographical origin of goods and the special qualities inherent in them (see, to that effect, judgment of 29

March 2011 in Anheuser-Busch v Budjovický Budvar , C96 /09 P, ECR, EU:C:2011:189, paragraph 147), the same cannot be

said of the essential function of a Community collective mark. The fact that the latter consists of an indication which may serve

to designate the geographical origin of the goods covered does not affect the essential function of all collective marks as stated

in Article 66(1) of Regulation No 207/2009, which is to distinguish the goods or services of the members of the association

which is the proprietor of that mark from those of other associations or undertakings (see, to that effect, judgment in

RIOJAVINA , cited in paragraph 32 above, EU:T:2010:226, paragraphs 26 and 27). Consequently, the function of a Community

collective mark is not altered as a result of its registration under Article 66(2) of Regulation No 207/2009. More specifically, a

Community collective mark is a sign allowing goods or services to be distinguished according to which association is the

proprietor of the mark and not according to their geographical origin.

42 Although Article 66(2) of Regulation No 207/2009 introduces an exception to Article 7(1)(c) of that regulation by relaxing the

conditions for registration and allowing marks describing the origin of the goods covered to be registered (see, to that effect,

judgment of 13 June 2012 in Organismos Kypriakis Galaktokomikis Viomichanias v OHIM — Garmo (HELLIM) , T534/10, ECR,

EU:T:2012:292, paragraph 51), that regulation is applicable, pursuant to Article 66(3) thereof , unless otherwise expressly

provided, to all Community collective marks, including those registered under Article 66(2) thereof.

43 Consequently, since none of the provisions in the chapter of Regulation No 207/2009 dedicated to Community collective

marks allows it to be inferred that the essential function of such marks, including those consisting of an indication which may

serve to designate the geographical origin of the goods covered, is different from the essential function of Community individual

marks, it must be held that the essential function of the former — as it is for the latter — is to distinguish the goods or services

covered according to the specific body from which they originate and not according to their geographical origin.

44 The applicant is therefore wrong to maintain that a Community collective mark consisting of an indication which may serve


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to designate the geographical origin of the goods or services covered is not capable of distinguishing the goods or services of

the members of the association which is the proprietor of that mark from those of other undertaking.

46 It follows from all of the foregoing that the function of Community collective marks falling under Article 66(2) of Regulation

No 207/2009 consists of distinguishing the goods or services covered by those marks according to which body is the proprietor

of the marks and not according to the geographical origin of those goods or services.

49 In the light of the foregoing, it must be found that, as OHIM and the intervener contend, where, in the context of opposition

proceedings, the signs at issue are collective marks on the one hand and individual marks on the other, the comparison of the

goods and services covered must be carried out using the same criteria as those which apply to an assessment of the

similarity or identity of goods and services covered by two individual marks.

60 It is also necessary, in view of what has been set out in paragraphs 40 to 43 above concerning the essential function of

collective marks falling under Article 66(2) of Regulation No 207/2009, to reject the applicant’s argument that, in the

assessment of whether there is a likelihood of confusion between such Community collective marks and individual marks, the

likelihood of confusion is the risk, not that the public might believe that the goods and services in question come from the same

undertaking or, as the case may be, from economically linked undertakings, but that the public might believe that the goods —

or the raw materials used to manufacture such goods or services covered by the signs at issue may have the same

geographical origin.

GC, 13/06/2012, T-534/2010

HALLOUMI

EU coll. mark 1082965

HELLIM

46 In paragraphs 25 to 27 of the contested decision, the Board of Appeal found, in essence, that the distinctive character of the

earlier mark was diluted by the descriptive meaning of the word ‘halloumi’, with the result that the earlier mark described the

product in question, that is to say, cheese. That sign describes, according to paragraph 27 of the contested decision, ‘the

nature and type of cheese thus designated and not its geographical origin or other characteristics marked by regional

particularities’.

47 The applicant claims, on the contrary, that sufficient account was not taken of the particularities resulting from the fact that

the earlier mark is a collective mark, which indicates not only that the cheese originates from certain undertakings, that is to

say, the members of the applicant, but also and necessarily that that cheese has a geographical origin (specific place of

production, special recipe based on milk from Cyprus). The specific characteristics of the collective mark, the application for

which is privileged under Article 66(2) of Regulation No 207/2009, cannot therefore adversely affect the applicant or imply that

the distinctive character of that mark has been diluted, but must rather lead to the conclusion that the mark has at least

average distinctive character.

48 That argument cannot be upheld.

49 It should be noted at the outset that Article 66(2) of Regulation No 207/2009, providing for a derogation from the ground for

refusal set out in Article 7(1)(c) of that regulation, must be interpreted strictly (Case T‑ 341/09 Consejo Regulador de la

Denominación de Origen Txakoli de Álava and Others v OHIM (TXAKOLI) [2011] ECR II‑ 2373, paragraph 35).


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50 As OHIM correctly points out, whilst it is true that Article 66(2) of Regulation No 207/2009 allows registration of collective

marks, notwithstanding the fact that they could fall within the scope of Article 7(1)(c) of that regulation, the second sentence of

Article 66(2) states expressly that a collective mark cannot entitle the proprietor to prohibit a third party from using, in the

course of trade, such signs or indications, on condition that that third party uses them in accordance with honest practices in

industrial or commercial matters; in particular, such a mark may not be invoked against a third party who is entitled to use a

geographical name.

51 It follows that, in the light of the need for a strict interpretation of Article 66(2) of Regulation No 207/2009, it is only at the

stage of registration that the conditions under which a mark is acquired have been relaxed, in so far as descriptive marks may,

by way of derogation from the conditions set out in Article 7(1)(c) of Regulation No 207/2009, be registered.

52 Contrary to the applicant’s submissions, registration as a collective mark cannot therefore, per se, give rise to a

presumption that the mark has average distinctive character, with the result that the Board of Appeal acted correctly in finding

that the distinctive character of the earlier mark had to be regarded as being weak.

53 In that regard, it must be borne in mind that, even in a case involving an earlier mark of weak distinctive character, there

may be a likelihood of confusion on account, in particular, of the identity of the goods in question and of the similarity between

the signs at issue (see judgment of 13 April 2011 in Case T‑ 358/09 Sociedad Agricola Requingua v OHIM — Consejo

Regulador de la Denominación de Origen Toro (TORO DE PIEDRA), not published in the ECR, paragraph 45 and the

case‑ law cited).

54 However, it must be held that, in the light of the fact that there are no phonetic or visual similarities between the signs at

issue, notwithstanding the identity or similarity of the goods concerned, there cannot be any likelihood of confusion on the part

of the target public since the existence of a conceptual similarity between the signs at issue is not, in the case of an earlier

descriptive mark, sufficient to give rise to a presumption of such a likelihood of confusion.

55 In the present case, notwithstanding the identity or similarity of the goods in question, given the fact that the earlier mark

does not have a particularly distinctive character, and in view of its descriptive character, the mere conceptual similarity is not

sufficient to give rise to a likelihood of confusion.

Case law of the EUIPO

The following are decisions which we believe are relevant for our analysis (decreasing

dates):

BoA, 30/08/2016, R3100/2014-4

HALLOUMI


13. The earlier mark is an EU collective mark. Pursuant to Article 66(1) EUTMR the essential function of an EU collective mark

is to distinguish the goods and services of an association of producers or traders from those of other undertakings. Except for

the clause laid down in Article 66(2) EUTMR, which is not relevant for the present case, as will be set out hereinafter, such a

trade mark is in all other respects to be treated in the same way as an ’individual’ EU trade mark (Article 66(3) EUTMR), and in


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particular it must be inherently distinctive (see 13.6.2012, T-534/10, ‘Hellim’, EU:T:2012:292, § 44, 47, 52).

OD, 30/09/2015, B1940017

EU coll. mark No 3 575 867

Regarding trade mark 1), where the mark on which the opposition is based is a collective mark, its inherent distinctiveness is to

be assessed in the usual way. The mark may have a low or even very low degree of inherent distinctiveness when it refers to

the nature or other characteristics of the goods concerned. The fact that the mark is a collective mark does not imply that its

scope of protection is broader (judgment of 13/06/2012, T-534/10, ‘HELLIM’, paragraphs 49-52, and judgment of 05/12/2012,

T-143/11, ‘F.F.R.’ paragraph 61).

In this regard, the elements ‘CONSEJO REGULADOR CAVA’ of earlier mark 1) will be associated by the Spanish- and

Portuguese-speaking public with the ‘Cava sparkling wine Regulatory Board’. Another part of the relevant public will, at least,

perceive the element ‘CAVA’ as ‘a Spanish sparkling wine’. Bearing in mind that the relevant goods are sparkling wines, it is

considered that these elements are non-distinctive for these goods. Consequently, for the part of the relevant public in the

European Union who understands the meaning of these elements their impact is limited when assessing the likelihood of

confusion between the marks at issue. For the remaining part of the public, earlier mark 1) has a normal degree of inherent

distinctiveness.

BoA, 20/05/2015, R 760/2014-4 & R 950/2014-4

ACEITES DE JAEN


13 The opposing trade mark is a Community collective mark, the function of which is to distinguish the goods and services of

the members of an association. This type of trade mark is clearly different from designations of origin or geographical

indications of provenance, the primary function of which is to indicate the geographical source of the goods and services. Thus,

although they may be registered despite the fact that they include indications, by virtue of the exception in Article 66(2) CTMR,

collective marks do not enjoy any advantage vis-à-vis third parties in terms of the opposition, and they will be compared with

other conflicting signs in the same way as if they were individual trade marks.

52 The expression 'ACEITES DE JAEN' lacks distinctive character in relation to 'edible oils and fats', and therefore its intrinsic

ability to identify said goods on the market and to differentiate them from those of competitors is practically zero. That

assessment was confirmed by the refusal, on absolute grounds, of the other opposing Community trade mark 'ACEITE DE

JAEN' as an individual trade mark for said goods. To conclude, it is confirmed that opposing Community collective mark No 8

992 901 ‘ACEITES DE JAEN’ was allowed to be registered solely under the exception of Article 66(2) CTMR in the case of

Community collective marks.


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OD, 21/01/2015, B2208489

HALLOUMI


The trade mark is a collective mark. Signs that may serve to indicate the geographical origin of the goods and services in

question can be accepted pursuant to Article 66(2) CTMR. ‘HALLOUMI’ is not a geographical term as such but it would be

understood, in particular by the Greek and Cypriot public, as an indication that the cheese is from Cyprus. The fact that the

trade mark has been accepted as a collective mark does not mean it necessarily has distinctive character for all the public.

Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue, at

least for the Greek-speaking part of the public. For the public that does not associate the trade mark with any meaning, the

mark has an average distinctive character.

The same applies to the ‘HALLOUMAKIS’ element of the contested sign, insofar as part of the public will recognise and

understand the word ‘HALLOUMI’, almost entirely present therein, as referring to the same concept as the earlier mark

‘HALLOUMI’.

However, for the part of the public that does not recognise and understand the words ‘HALLOUMI’ and/or ‘HALLOUMAKIS’ as

conveying any conceptual meaning, these elements have a normal degree of distinctiveness.

…

For a mark to become reputed or to have an enhanced degree of distinctiveness it is a necessary condition to have been used

and be perceived as a trade mark, that is, a sign distinctive of a company or, in this case, as a collective trade mark, that is, a

sign aimed at distinguishing the goods and services of the members of the association which owns the trade mark from those

of other companies which do not belong to that association. Therefore a Community collective trade mark shall qualify the

commercial origin of certain goods and services by informing the consumer that the producer of the goods or the services

provided belong to a certain association and that it has the right to use the mark in accordance with the regulation of use of the

mark. If the use is not done as trade mark use but as a descriptive name, it cannot qualify as trade mark use, and a fortiori

suffice to prove the mark has acquired enhanced distinctiveness through use.

The fact that the earlier Community trade mark is a collective mark which may be used by all manufacturers that comply with

the regulations laid down by the owner of the mark, does not automatically mean that the term ‘halloumi’ has been used in a

trade mark sense, that is to indicate a particular commercial origin or particular qualities. Whether a name is a mark must be

determined from the viewpoint of the relevant public and it is for the opponent to prove that the relevant public perceives a

given name as a trade mark which, in the Opposition Division’s view, the opponent has failed to do.

BoA, 06/02/2014, R 861/2013-2

TURRON DE JIJONA


SEÑORÍO DE JIJONA


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33 With respect to the applicant’s argument that the decision failed to correctly take into consideration the reasoning relating to

the opposing trade mark’s character as a collective mark, the Board notes that the provisions of Title VIII of the CTMR on

collective marks are relevant in the context of absolute grounds for refusal, but not relative grounds for refusal. That is to say, it

serves for the purpose of legal definition of the scope of protection of a trade mark, which may be relevant within the context,

for example, of a ruling that a trade mark has been infringed. The fact that the earlier trade mark is a Community collective

mark is irrelevant in terms of the assessment of the likelihood of confusion, which is appreciated globally, taking account of the

perception of the trade marks on the part of consumers

49 (…). As pointed out by the Opposition Division, despite the fact that the applicant asserts that ‘JIJONA’ evokes the

geographical origin of the goods it should be stated that the earlier trade mark must be considered to be distinctive overall

since it is a collective mark of which the opponent is proprietor.

50. Furthermore, Article 66(2) CTMR states that signs or indications which may serve, in trade, to designate the geographical

origin of the goods or services may be registered as Community collective marks. Thus, the level of distinctive character of the

earlier trade mark has to be normal, even in the case of Spanish consumers who will clearly understand the meaning of the

earlier trade mark.

53 Furthermore, the applicant argues that it may use as many trade marks as it wishes, jointly, on its goods, bearing in mind

that the function of a collective mark and an individual trade mark is different. In this case, the applicant mentions that it is,

moreover, a member of the Regulatory Council and is entitled to use the collective trade mark, where appropriate, in

conjunction with its individual trade marks. As pointed out by the Opposition Division, this argument relates to the permitted use

of the earlier collective mark by the members of the Regulatory Council as a trade mark to certify quality, together with their

respective individual trade marks, but that permission does not imply that consent is also being given to the registration and

use of individual trade marks that take advantage of or cause detriment to the distinctive character or the reputation of the

earlier collective mark. Ultimately, consent to use the collective mark in due form does not allow authorized users to

appropriate or to register the dominant, defining component of the collective mark as an individual trade mark, to their own

benefit, as the applicant is attempting.


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Comments on the case law

Is it correct to assess the likelihood of confusion in the same way when the earlier trade mark

is a standard individual mark or a collective mark identifying a GI? The reference by the

Regulation to the rules provided for in Article 8 EUTMR implies a positive answer, at first

sight. However, this practice is clearly not adapted. Indeed:

- A GI incorporated in a collective mark will always be perceived by the public as a

geographical indication, i.e. the word, or the logo, that identifies that a product complies with

such and such characteristics. The reference to the function of these marks as identifiers of

the goods produced by a specific group of producers is theoretical only: it is simply not

realistic if one takes into account the perception of the public, which is essential.

- If the law allows the registration of signs which are descriptive of the geographical origin of

the product, we have to adopt a consistent approach. One cannot say that these marks, once

registered, have “zero” distinctive character. If this is so, then the collective scheme for

geographically descriptive terms would simply be a means of collecting taxes with nothing in

return.

- If a geographically descriptive term is registered as a collective mark, and once we agree

that it has some distinctive character for the relevant goods (i.e. the goods subject to the GI

protection), what is its inherent level? Is it right to consider that it has a low distinctive

character? Or should it be a normal distinctive character? Or are these trade marks

distinctive, to a certain level, solely when its owner can show that it has some reputation?

In the opinion of ECTA, collective marks consisting of geographical indications should be

deemed to have an inherent normal distinctive character. Besides, no account should be

given to the actual knowledge of the GI by all or part of the public of the EU. For example, it

is not correct to argue that a collective mark CAVA has a weak distinctive character for the

Spanish public, and however a normal distinctive character for the public of Poland or

Estonia, simply because this GI is not known there. Indeed, what matters is that by law, by

EU law, CAVA is a GI, and this is true throughout the EU.

Clearly, the Regulation contains an exception for geographically descriptive signs in Article

66.2, and this cannot be ignored. This exception draws consequences, meaning that a

geographically descriptive term has a normal distinctive character and should be

enforceable.

- As already mentioned, the assessment o likelihood of confusion should not be simply

copied from the regular practice on standard individual marks. Proof of that is that there will

(or there should not be) be no confusion in many cases, even in case of high similarity of

signs, for identical products: i.e., if an application for “ECTA SCOTCH WHISKY”, covering

the goods “scotch whisky” in class 33, is opposed by an EU coll. Mark SCOTCH WHISKY,

there should be no likelihood of confusion. That is a clear contrast. For this reason, we regret

the current approach of the EUIPO and of the GC to limit the assessment of confusion strictly


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on the alleged essential function of collective marks, which is to identify the goods and

services as originating from the members of a given association.

Conclusions – comments and recommendations of ECTA

- ECTA would be happy to exchange views and case law with the EUIPO on this difficult

subject.

- The discussions above are also valid for geographical terms, not necessarily qualifying as

geographical indications, but where there exists a “link” between the name and the product

(ex. DEGUSTA JAEN CALIDAD, no. 11717683, for olives, FLAMMEKUECHE D’ALSACE no.

11457777 for savoury tarts, SÜDTIROL no. 9535709 for several foodstuff, etc.).

- EUIPO should systematically indicate the nature of the trade marks compared in its

decisions. This is often not the case.

- Collective marks should not be excluded from the next legal reform. The recent process

was a lost opportunity; we hope that the next one will address it.

- The EUIPO could dedicate special provisions of its Guidelines to address the issue of the

opposability of collective marks identifying geographical indications, or at least geographical

terms.

- The EUIPO could promote the collective scheme with its users (in its website, in its

newsletters, in its webinars, etc.


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ECTA, which was formed in 1980, is an organisation concerned primarily with trademarks and designs. ECTA has approximately 1,500 members, coming from all the Member States of the EU, with associate Members from more than 50 other countries throughout the world. ECTA brings together those practising in the field of IP, trademarks, designs and related matters. These professionals are lawyers, trade mark and patent attorneys, in-house lawyers concerned with IP matters, and other specialists in these fields. ECTA does not have any direct or indirect links to, and is not funded by, any section of the tobacco industry.

The extensive work carried out by the Association, following the above guidelines, combined with the high degree of

professionalism and recognised technical capabilities of its members, has established ECTA at the highest level and has allowed the Association to achieve the status of a recognised expert spokesman on all questions related to the protection and use of trade marks, designs and domain names in and throughout the European Union, and for example, in the following areas:

Harmonization of the national laws of the EU member countries;

European Union Trade Mark Regulation and Directive;

Community Design Regulation and Directive;

Organisation and practice of the EUIPO.

In addition to having close links with the European Commission and the European Union Intellectual Property Office (EUIPO), ECTA is recognised by WIPO as a non-Government Organisation (NGO).

ECTA does also take into consideration all questions arising from the new framework affecting trademarks, including the globalization of markets, the explosion of the Internet and the changes in the world economy.

The European

Communities Trade Mark Association

ECTA POSITION PAPER Opposability of collective … of collective marks identifying Geographical Indications 2 Summary Trying to recommend a policy on the enforcement of geographically

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