Italian company tries to protect 'Virginia' in Hungary

Amaretti sought protection for the word in classes 29, 30, 31 32 and 33 under the Nice Agreement. These classes cover goods and services such as meat, coffee, agricultural products, beer and alcoholic beverages.

The Hungarian Intellectual Property Office (HIPO) rejected Amaretti’s trademark application. According to HIPO, the designation Virginia could deceive the public as to the goods indicated in the list of goods and services, and consumers might erroneously think that the goods originated from the US.

Virginian tobacco and the US state of Virginia are known in Hungary; therefore, in HIPO’s opinion, the designation would bring the name of the US state to consumers’ minds. The State of Virginia is also one of the great agrarian areas in the US, so consumers may assume that products labelled with the mark ‘Virginia’ originate from the US.

On behalf of the Italian company, Danubia Patent and Law Office asked for a review of HIPO’s decision. Danubia claimed that the fact that Virginian tobacco is the most known tobacco in the world is not relevant in the given case. This is because the list of goods and services in which the designation is to be protected does not include class 34 and the tobacco products within it.

Even if Hungarian consumers know that Virginia is a state of the US, they would not necessarily think that poultry, coffee and vegetables labelled with this designation would be imported from the US Danubia referred to the European Court of Justice (ECJ) 1999 decision in the Chiemsee case, which involved geographical designations, in its request for a review of HIPO’s decision in the Virginia case.

"EVEN IF HUNGARIAN CONSUMERS KNOW THAT VIRGINIA IS A STATE OF THE US, THEY WOULD NOT NECESSARILY THINK THAT POULTRY, COFFEE AND VEGETABLES LABELLED WITH THIS DESIGNATION WOULD BE IMPORTED FROM THE US."

According to the ECJ’s opinion in the Chiemsee case, if the relevant consumers do not connect the geographical name to the category of goods in question, it should be assessed whether it is reasonable to believe that such a name would be able to indicate the geographical origin of this category of goods.

As the designation has several meanings, it cannot be unambiguously established that it would be a geographical indication only.

The Metropolitan Court referred to its own earlier decision in the trademark-related Gibraltár case and the observations established in that. According to this decision, a designation containing a geographical name is not certainly deceptive just because it refers to an origin different from the actual origin of the goods. However, a mark should be considered deceptive if consumers expect positive things of the goods and they cannot comply with these expectations because of their actual place of origin.

With regards to the designation Virginia, the Metropolitan Court has established that even if consumers are aware that Virginia is a state of the US, the average consumer would not associate this with every good and service concerned in the present trademark application. Consumers would not think that all high-quality products in these classes would originate from the US State of Virginia.

Furthermore, consumers will not have any positive expectations of the products concerned while associating them with the State of Virginia. Therefore, according to the Metropolitan Court, it is not reasonable to assume that the designation would deceive consumers, even with regard to the geographical origin.

The Virginia case was a consequent continuation of the decision made in the Gibraltár trademark application case 10 years earlier. Both decisions result from different deliberations, and in the Virginia case, observations on European legal practice were also taken into consideration.

It is evident that if Amaretti had tried to register the word Virginia as a trademark for labelling tobacco, the Metropolitan Court would have refused the request on the ground of the legal prohibition pertaining to geographical indications.

Alexander Vida is a legal counsel at Danubia Patent & Law Office LLC. He can be contacted at: vida@danubia.hu