The OHIM’s Opposition Division, in its Decision of February 2, 2015, in the opposition proceedings B 2133828, refused the registration of the Community Trade Mark “COLOMBUENO” in class 43 (‘services for providing food and drink’), due to the conflict with the PGI “Café de Colombia”, as requested by the opponent, the Federación Nacional de Cafeteros de Colombia and its legal representative (Berenguer & Pomares abogados).
The protection granted to PDOs and PGIs against the use of conflicting signs in the course of trade (including with respect to services) is set forth in Art. 13(1) of the Regulation (UE) 1151/2012 on quality schemes for agricultural products and foodstuffs. However, before the case at issue, the OHIM Board of Appeal had denied this kind of protection with respect to trade marks conflicting with PDOs/PGIs. So far, to deny such trade mark applications, the OHIM had required them to cover the same type of product of the PDO/PGI at issue, as an additional requirement imposed by Art. 14 of the aforementioned Regulation (UE) 1151/2012.
Through this recent Decision, the OHIM took a different approach. The reinforced protection granted to PDOs and PGIs pursuant to Art. 13(1) of the Regulation (UE) 1151/2012 was considered directly applicable to opposition procedures against the registration of trade marks conflicting with PDOs/PGIs, based on Art. 8(4) of the CTMR which deals with oppositions based on signs other than trade marks.
In particular, the OHIM Opposition Division considered the existence of a link between the food and beverage services object of the trade mark application and the PGI product (coffee), to the extent that consumers may expect that in an establishment named “COLOMBUENO”, “Café de Colombia” is served. Furthermore, the Opposition Division considered that the protection granted to the PGI against the registration of trade marks for services is effective not only in cases of direct use of the protected name (Café de Colombia), but also in cases of its evocation (COLOMBUENO).
With this Decision, the OHIM puts on the same level the scope of protection granted to PDOs and PGIs in the course of trade and the one provided in the framework of trademark opposition proceedings. This represents a coherent application of the relevant European law on GIs. In this respect, over the last few years, oriGIn had sent several letters to OHIM considering the need to look at Art. 14 of Regulation (UE) 1151 in conjunction with Art. 13 of the same Regulation, as the only possible coherent application of the law.
This summary has been extracted from an “oriGIn Alert”, which is a service reserved exclusively to oriGIn members.
