EU court rejects two TM appeals from St Andrews Links
The EU General Court has handed defeat to St Andrews Links, a business that runs the famous St Andrews golf courses, after dismissing two trademark appeals.
Located in St Andrews, Scotland, St Andrews Links is regarded as “the home of golf” by many, and has one of the oldest golf courses in the world.
According to the company’s website: “For more than 600 years St Andrews Links, much like the game of golf itself, has evolved. Today more than 230,000 rounds are played over our seven public courses.”
But, on Monday, November 19, the General Court dismissed two appeals from St Andrews Links, concerning two trademarks for ‘St Andrews’.
In December 2010, St Andrews Links applied to register ‘St Andrews’ for classes 25, 28, 35, and 41, covering goods and services including clothing, games, retail store services and club services such as entertainment or education.
Two years later, St Andrews Links applied to register ‘St Andrews’ for the same classes.
But, in November 2016, both trademarks were rejected by an examiner who found that the trademarks were descriptive of “certain positive characteristics of the goods and services covered” and that St Andrews Links’ evidence was insufficient to prove acquired distinctiveness.
In January last year, St Andrews Links appealed against the decisions to the European Union Intellectual Property Office (EUIPO).
The EUIPO’s Fourth Board of Appeal annulled the examiner’s decision for many of the goods and services covered and allowed the trademarks to be published for these. However, the appeal board dismissed the appeal for all but one of the services in class 41.
The board found that the expression “St Andrews” referred to a town known for its golf courses “although not particularly for the manufacturing or marketing of clothing, footwear, headgear, games and playthings”.
Because of this, the expression couldn’t be considered indicative of the geographical origin of the goods in classes 25, 28 and 35 and the services for ‘providing online computer games’ covered by class 41.
But the board also found that such a link could be established by the other class 41 services and the expression, as the services can all directly relate to golf.
St Andrews Links again appealed against the decisions, asking the General Court to annul the contested decision insofar as it dismissed the application for registration in class 41.
In its appeal, the Scottish company claimed that the appeal board had erred in finding a connection, because the relevant public would attach more importance to St Andrews Links’ reputation than to the fact that the services originate from the town of St Andrews or are organised in St Andrews.
St Andrews Links also contended that the services are not specifically associated with golf sport.
The General Court rejected all of these arguments.
It took into account the “considerable reputation” of the town of St Andrews for golf and the relevant public’s knowledge of that reputation, along with the fact that the services at issue could all directly relate to golf.
“The services covered by the mark applied for do not possess any particular quality that could lead the relevant public to disassociate the geographical indication from the geographical origin of those services,” added the court.
Despite St Andrews Links’ argument that the public would attach more importance to its reputation than the fact the services originate from St Andrews, the General Court found that the appeal board was entitled to find that there were, in addition to St Andrews Links’ golf courses, “several other major golf courses which lay claim to part of the heritage of St Andrews”.
The court dismissed the action and ordered St Andrews Links to pay the costs in both cases.
The rulings are available here and here.
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