Acquisitions of Marks
  
International, regional and national systems offer trade and service mark protection with lower costs compared with strictly national protection schemes of the past. Depending on the number of countries covered savings can amount up to 80 % compared with separate national applications. The Madrid System provides trade and service mark protection for 70 countries. The European Union community mark provides trade and service mark protection for actually 27 member states.

The Madrid Trademark System is a global system covering nearly all jurisdiction of the eastern hemisphere, the United States of Amercia and Japan. It allows  trademark applicants to file only one application to protect their mark, instead of having filing single applications for each country.  Through the local national patent and trademark offices applications are forwarded to the World Intellectual Property Organisation (WIPO) in Geneva (Switzerland).

Office fees of Madrid Union marks can be calculated with the World Intellectual Property Organisation Fee Calculator

The registration of the trade mark ‘CANNABIS’ for beverages potentially containing hemp is not permitted

Court of First Instance of the European Communities
PRESS RELEASE No 103/09
Luxembourg, 19 November 2009

Judgment in Case T-234/06 of  Giampietro Torresan v OHIM

The trade mark is purely descriptive of the fact that the average consumer who is reasonably circumspect may think that it constitutes a description of the characteristics of the product

In 2003, Mr Giampietro Torresan obtained from OHIM, the Community Trade Marks Office, the registration as a Community trade mark of the word sign CANNABIS in respect of beers, wine and spirits. Following an application filed by Klosterbrauerei Weissenohe GmbH & Co. KG, established in Germany, the mark was declared invalid by OHIM, which found that it was descriptive. It found that the word ‘cannabis’ designated, in everyday language, a textile plant or a narcotic substance and that it was, for the average consumer, a clear and direct indication of the characteristics of the goods for which it had been registered.

Mr Torresan disputes that decision and maintains that the trade mark CANNABIS has distinctive character, given that it is both a common name and a purely fanciful mark and has no connection, even indirect, with beer and beverages in general. As a common name, the word ‘cannabis’ constitutes the scientific name of a flowering plant from which certain drugs are extracted and from which certain therapeutic substances may be obtained. The sign CANNABIS has been present on the Italian market as a trade mark since 1996. It has, since 1999, acquired a high degree of renown as a Community trade mark for beers, wine and spirits. In any event, the word ‘cannabis’ does not constitute the normal way of designating beers or alcoholic beverages.

The Court points out, first, that the word ‘cannabis’, also referred to as ‘hemp’, has three possible meanings, namely:

• a textile plant the common organisation of the market in which is regulated within the Community framework and the production of which is subject to very strict legislation as regards the content of it active ingredient (tetrahydrocannabinol: THC),
• a narcotic which is prohibited by a great number of Member States,
• a substance the therapeutic use of which is under discussion.

The Court also points out that cannabis is used in the food sector in different forms (oils, herbal teas) and in different preparations (teas, pasta, bakery and biscuits, alcoholic or non-alcoholic beverages, etc.), all of which contain a very low concentration of THC and therefore have no psychotropic effects.

The Court also states that the Regulation on the Community Trade Mark prohibits the registration of descriptive signs and indications which may, in trade, designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production and may serve, in normal usage from the point of view of the target public, to designate, either directly or by reference to one of their essential characteristics, the product. Those descriptive signs are incapable of fulfilling the indication-of-origin function which forms an integral part of the trade mark. A mark’s descriptive character must be assessed in relation to the goods for which the mark was registered and in the
light of the presumed perception of an average consumer of those goods, who is reasonably well informed and reasonably observant and circumspect.

The Court therefore establishes whether the average consumer may think, merely on seeing a beverage bearing the trade mark CANNABIS, that that mark describes the characteristics of the goods in question.

First, it states that there is a material link between the sign CANNABIS and certain characteristics of the goods in question as cannabis is used in the manufacture of numerous foodstuffs, including beer and certain beverages. Secondly, the Court states that the word ‘cannabis’ is a Latin scientific term which is well known, is present in a number of European Community languages and has had a lot of media coverage, rendering it comprehensible to the target consumer throughout the Community. Consequently, the average consumer will perceive the trade mark CANNABIS as a description of one of the characteristics of those goods. The Court points out that that characteristic is a determining factor for the consumer when he makes his purchase because he will be attracted by the possibility of obtaining similar sensations to those he obtains from the consumption of cannabis.

On those grounds, the Court dismisses Mr Torresan’s action and upholds OHIM’s decision to declare the registration of the trade mark CANNABIS to be invalid in respect of beverages potentially containing hemp.


Distinctive or generic?

GRANA is protected at community level as a trade mark and not a generic name.  The  Court of First Instance annulled the decision of the Board of Appeal of OHIM and held that the name ‘GRANA’ is not generic and that the designation of origin ‘GRANA PADANO’ precludes registration of the mark GRANA BIRAGHI

In the year 1999 the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) registered the word mark GRANA BIRAGHI as a Community trade mark for various kinds of cheese. The same year, the Consorzio per la tutela del formaggio Grana Padano filed an application for and obtained a declaration from OHIM’s Cancellation Division that the mark was invalid because of the registration of earlier national and international marks GRANA and GRANA PADANO and of an infringement of the designation of origin ‘grana padano’. Subsequently the First Board of Appeal of OHIM found the word ‘grana’  generic and describing an essential quality of the goods and that the existence of the protected designation of origin ‘grana padano’ did not preclude registration of the Community trade mark GRANA BIRAGHI. The Consorzio per la tutela del formaggio Grana Padano asked the Court of First Instance of the European Communities to annul that decision.

The Court held that the Regulation on the Community trade mark does not affect the provisions of the Regulation on the protection of geographical indications and designations of origin for agricultural products and foodstuffs. According to this regulation an application for registration of a mark which refers to a name registered in respect of products not covered by the registration itself or which misuses, imitates or evokes a protected name must be refused by OHIM. Where the mark has already been registered, OHIM must declare that registration to be invalid.

The Board of Appeal of OHIM has to determine whether the word which it is being asked to register actually constitutes a generic name or possibly establish the protection to be granted to the various components of a name. That determination must be carried out on the basis of a detailed analysis of all the factors which could establish the generic nature. According to the indications already provided by the case-law of the Court of Justice, the requisite detailed analysis must be carried out by means of legal, economic, technical, historical, cultural and social evidence, on the basis of the relevant national and Community legislation and its historical development, and must be based on the perception which the average consumer has of the name, as well as on data relating to marketing, both in the Member State of origin of the goods and in other Member States.

The Court held further that the Board of Appeal failed to apply the criteria identified by the Community case-law on protected designations of origin and did not consider any factor making it possible to carry out the analysis of the possibly generic character of a name or of one of its components. Accordingly, it neither called for opinion polls of consumers nor for the opinion of experts qualified in the subject area and moreover it did not request information, although it could have done so under the Regulation on the Community trade mark. By contrast, the extracts from dictionaries and the internet research – on which the Board of Appeal’s decision is based – are not capable of establishing the generic nature of a name.

The Court  adds that changes in the Italian legal context and the administrative practice of systematically seizing cheeses bearing only the indication ‘grana’ indicate that the name is not generic. On the basis of all those factors, the Court of First Instance held that the Board of Appeal of OHIM erred in finding that the name ‘grana’ was generic and that the existence of the PDO ‘grana padano’ did not preclude the registration of the mark GRANA BIRAGHI. The name GRANA BIRAGHI accordingly cannot be registered as a trade mark.