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29 January 2018Trademarks

General Court rules against EUIPO in goat’s cheese TM case

The EU General Court ruled against the European Union Intellectual Property Office (EUIPO) on Thursday, January 25, in a trademark case involving goat’s cheese from the Canary Islands in Spain.

In September 2014, Spain-based Grupo Ganaderos de Fuerteventura applied for an EU trademark to register ‘El tofio, el sabor de Canarias’, which translates to “The tofio, the taste of the Canary Islands.”

The company sought the trademark for a figurative sign depicting the head of a goat above a sign that reads “El Tofio”. The words “El sabor de Canarias” are featured below the sign. Food items including dairy products, meat, and compotes were covered by the mark.

But in May 2015, the EUIPO refused registration for the trademark for some of the products, taking issue in particular with the term “El tofio”, which refers to the bowl used to collect goat’s milk in the Canary Islands.

After an appeal from the Spanish company, the EUIPO’s Board of Appeal ruled that ‘El tofio’ is a common phrase used among natives of the Canary Islands and should not be trademarked.

Grupo Ganaderos de Fuerteventura appealed against the decision to the General Court, claiming that few people would recognise the term ‘El tofio’ and there would not be a strong connection between its mark and the bowl.

The applicant said before the General Court that case law “would require a direct and concrete, even immediate, relationship between the product concerned and the mark applied for”.

Grupo also claimed that the Board of Appeal did not take into account the fact that goat’s milk had not been collected in such apparatus for many years due to health reasons.

“Therefore, the ‘tofio’ would no longer be used and the knowledge of this type of product would be circumscribed to a limited number of people from the island of Fuerteventura, mainly the elderly,” said Grupo.

The EUIPO disputed this argument and said that the average Spanish speaker would be aware of the term.

In backing Grupo, the General Court said that the Board  of Appeal had failed to demonstrate that Spanish-speakers were aware of the function of the ‘tofio’ and of its links with the products concerned.

The appeal board’s decision was set aside by the General Court.

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