FOOD TRADEMARKS

EU General Court cancels EU trademark on the ground of likelihood of confusion with Toscano geographical indication for olive oil: a decision to bear in mind when filing food trademarks.

A recent decision of the General Court of the European Union gives guidance on the application of European Union law in conflicts between a European Union trademark and a protected geographical indication.

The trademark at issue was the word sign TOSCORO, registered with the European Union Intellectual Property Office (EUIPO) for several food products including edible vegetable oils and olive oil.

The Consorzio per la tutela dell’olio extravergine Toscano applied to EUIPO for a declaration that the TOSCORO trademark was invalid on the grounds that it conflicted with the protected geographical indication TOSCANO, registered for olive oil under the European Union’s Regulation n. 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs.

The cancellation division of the EUIPO granted the declaration of invalidity of the TOSCORO trademark for several products including edible vegetable oils and olive oil. This decision was confirmed by the board of appeals of the EUIPO, and the holder of the TOSCORO trademark appealed to the General Court of the European Union.

The decision in case T-510/15 issued by the General Court of the European Union on 2 February 2017 essentially confirmed the findings of the EUIPO’s board of appeals, namely that the two conflicting signs were visually and phonetically similar owing to the common initial element “tosc”, to the identical number of letters and to the identical final letter “o”, and that the TOSCORO trademark evoked the protected geographical indication TOSCANO in consumers of edible vegetable oils and of olive oil in particular.

The TOSCORO mark was therefore to be considered likely to be confused with the TOSCANO protected geographical indication, and on this ground the General Court of the European Union confirmed the decision of the EUIPO’s board of appeal to cancel the registration of the TOSCORO mark.

This decision is an instance of the interpretation by a European Union court of provisions concerning the conflict between a trademark and a protected geographical indication.

There are two particularly interesting aspects in this decision.

The first is that the General Court of the European Union confirmed the assessment of the likelihood of confusion between a trademark and a protected geographical indication that had been carried out by the EUIPO’s board of appeals essentially by applying the same principles employed in assessing the likelihood of confusion between two trademarks.

The second is that the court gave a strict interpretation of European Union provisions on the conflict between a trademark and a protected geographical indication (and in particular of provisions of the regulations on geographical indications), where they provide that trademarks usurping, imitating or evoking a protected denomination of origin or a protected geographical indication must not be registered.

Lastly, the General Court of the European Union interpreted the provisions as meaning that the product in question must not necessarily coincide with the one for which the protected geographical indication is registered: it is sufficient that some common characteristics exist between the two products.

In the light of this decision, applicants seeking registration for trademarks covering food products should consider carrying out a priority search including protected denominations and indications of origin as well as trademarks.