EU court picks holes in Emmentaler’s PDO case
EUIPO Board of Appeal dismisses cheese maker’s ‘descriptive’ mark | Swiss company held that mark had a geographic origin | Germany and France swung weight behind EUIPO.
A Swiss cheese maker has suffered a loss at the EU General Court in a case concerning its bid to secure rights to the word ‘Emmentaler’.
The tenth chamber of the court delivered its decision today, May 24, on the grounds that the word mark applied for was descriptive, and could not denote a protected designation of origin (PDO).
The ruling marks a victory for the EU Intellectual Property Office ( EUIPO), which was backed by the Federal Republic of Germany, the French Republic, and by the National Interprofessional Center for Dairy Economics (CNIEL).
Background
The dispute’s origins emerged in October 2017, after Emmentaler Switzerland gained an international registration bearing the number 1378524 of the word mark ‘Emmentaler’ from the International Bureau of the World Intellectual Property Organization.
The goods fall within Class 29 of the Nice Agreement, and corresponded to the following description: “cheeses with a protected designation of origin ‘Emmentaler’”.
In December that year, the EUIPO was notified of this international registration, but its office examiner later rejected the application for registration in 2019.
The EUIPO Board of Appeal went on to dismiss Emmentaler’s appeal on the basis that the mark applied for was descriptive, and the word would be immediately understood by people across the EU as designating a type of hard cheese with holes.
Emmentaler sought an annulment of the decision claiming the infringement of Article 74(2) of Regulation 2017/1001 and, the second, infringement of Article 7, paragraph 1(b) and (c) of that regulation.
These articles govern the regulation of EU collective marks which may be used, in trade, to designate the geographical origin of the goods or services in question.
‘Fatty Swiss cheese with holes the size of a cherry’
To demonstrate that the sign designates a type of cheese, the Board of Appeal relied on the definition of the corresponding term in the Duden dictionary, in which the term designates a “fatty Swiss cheese with holes the size of a cherry and a taste similar to walnut kernels; Emmental cheese”.
Emmentaler contended that the board wrongly relied on that definition, since the Duden dictionary does not indicate that that term designates, in German, a type of cheese, but it expressly states that it is of a Swiss cheese.
But the General Court held that the definition is supplemented by a second definition, namely 'Emmental cheese'.
“The succinct nature of this definition, which does not contain any other specification, in particular as regards the geographical origin of the product concerned, supports the conclusion that, according to this dictionary, the term 'Emmentaler' should be understood as designating a type of cheese particular,” said the court.
“That conclusion is also confirmed by the fact that that definition refers to the characteristics of a cheese as such, when it specifies that that term refers to a cheese 'having holes the size of a cherry and a taste of kernels of nuts’.”
German production
Emmentaler further claimed that a factual finding of the Board of Appeal that Emmentaler is a cheese produced and marketed in several member states, including Germany, had not been sufficiently demonstrated.
But the court pointed to evidence provided by the Bavarian Dairy Association showing that, of the 135,000 tonnes of Emmentaler produced in Germany in 2016, only 80,000 were exported.
“It follows that a substantial part of the quantity of Emmentaler produced in Germany was marketed directly in Germany,” said the court.
“Those cheeses, which come from several economic operators and were produced and marketed in Germany, bear that name without that name being accompanied by an indication of the country or place of manufacture,” it added.
Such a circumstance, it noted, constitutes valid evidence that the relevant public perceives that name as designating a characteristic of those goods and, therefore, as being descriptive.
“Consequently, the applicant's complaint that the Board of Appeal could not rely on the production in Germany of the cheese called Emmentaler as one indication among others of the descriptive character of that sign must be rejected,” said the court.
Descriptive character
Emmentaler further argued that the board carried out an erroneous assessment of the evidence and wrongly concluded that the mark applied for was descriptive of the goods in question.
It additionally claimed that the name ‘Emmentaler’ taken in isolation should benefit from protection as a collective mark, under Article 74(2) of Regulation 2017/1001, since it refers to the geographical origin of the products in question.
The board, however, took into account the negotiation of the agreement of May 2011 between the EU and Switzerland relating to protection of designations of origin and geographical indications for agricultural products and foodstuffs
This lists the names of cheeses which are the subject of mutual protection by the contracting parties as designations of origin and geographical indications. However, the name ‘Emmentaler’ was not included in this list, since "[the Union had considered] the name '[E]mmentaler' as a generic name" and that "[it] has [had] required that this denomination could be used in all member states”.
The General Court ultimately agreed with the EU and the board.
In its conclusion, the court opined that: “In the present case, it is apparent…that the Board of Appeal correctly concluded that the term 'Emmentaler' was descriptive of a type of cheese for the relevant German public and was not perceived as an indication of geographical origin of that cheese.”
It added that the applicant has not submitted to the court any other specific evidence which showed that the public understood the sign in that sense.
Consequently, the court ruled that the action in its entirety must be dismissed, and ordered Emmentaler Switzerland to pay the costs.
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