Registering geographical terms as trademarks

In Summer 2014 the EU Council announced a common position on trademark law reform, envisioning, among other things, closer cooperation between the Office for Harmonisation in the Internal Market (OHIM) and national offices, which hopefully will achieve closer harmonisation in the application of trademark law. The registrability of geographical terms as trademarks is one area in which Sweden's position differs from that of the European Court of Justice (ECJ) and OHIM.

On December 30 2011 the Swedish Court of Patent Appeals saw an opportunity to bring Swedish case law on the registrability of geographical terms as trademarks into line with the ECJ Chiemsee decision (Joined Cases C-108/97 and C-109/97). The Swedish Patent and Registrations Office had refused to register the term NACKA FORUM for the rental of real estate, offices, commercial premises and apartments (Nacka Forum is a shopping mall located in the municipality of Nacka), but the Court of Patent Appeals overturned the decision and granted registration. Since then, other geographical trademarks have been registered, including MÖRBY CENTRUM (another mall located in Mörby.

NACKA FORUM
Citing Chiemsee, the Court of Patent Appeals stated that the intention behind the decision was to keep geographical names free for all to use as protected geographical indications. The court further concluded that according to Chiemsee, it must be assessed whether a geographical term is associated with the quality or other characteristics of the goods or services in question, or whether it is reasonable to believe that this may happen in future.

The court considered that there were no grounds to refuse registration of NACKA FORUM since there was no evidence that Nacka was associated with the quality or other characteristics of the goods and services to which the trademark would apply. It is unclear what it meant by 'other characteristics', but it seems likely that this did not include geographical origin, since the court also stated that registration is not precluded simply because the goods or services originate from the place indicated by the geographical term.

Chiemsee
There is much in the ECJ's Chiemsee decision to indicate that it intended the word 'association' to have a broad meaning.

The ECJ stated that even where no such association currently exists, an application must be refused where the geographical term is “liable to be used in future by the undertakings concerned as an indication of the geographical origin of that category of goods" (Paragraph 37). It would be inconsistent either to require a qualitative association in the present or, where no such association exists, to require only that the geographical term is liable to be used in the future as an indication of geographical origin (even where there is no qualitative association).

The ECJ focused on whether the geographical term is capable of designating the geographical origin, stating that:

 “[W]here there is currently no association in the mind of the relevant class of persons between the geographical name and the category of goods in question, the competent authority must assess whether it is reasonable to assume that such a name is, in the mind of the relevant class of persons, capable of designating the geographical origin of that category of goods.” (Paragraph 37)

The ECJ did state that in making such assessment, particular consideration should be given to “the characteristics of the place designated by that name” (Paragraph 37). However, it also stated that in that regard, the descriptiveness provision:

“does not in principle preclude the registration of geographical names which are unknown to the relevant class of persons or at least unknown as the designation of a geographical location or of names in respect of which, because of the type of place they designate (say, a mountain or lake), such persons are unlikely to believe that the category of goods concerned originates there.” (Paragraph 33.)

Hence, the characteristics of the designated place are not those of quality in relation to the products covered by a trademark application; instead, they relate to the type of place (eg, a mountain, a lake) which the geographical term designates. Additionally, in Paragraph 34 of its decision the ECJ clarified that even the name of a lake can serve to designate the geographical origin if it can be understood to include the shores of the lake. The ECJ's focus appears to lie not with whether there is a qualitative association between the geographical term and the products, but with the issue of whether the geographical term can be understood to describe the origin of the products.

Descriptiveness provision as a whole
Requiring a qualitative association would treat geographical terms differently from all other instances of descriptiveness (ie, as to kind, quantity, intended purpose and time of production). It is clear from the ECJ’s Postkantoor decision (C-363/99) that it is sufficient to refuse an application where the term is or in future may serve as a descriptive term:

“In those circumstances, the competent authority must, under Article [7(1)(c)] of the Directive, determine whether a trade mark for which registration is sought currently represents, in the mind of the relevant class of persons, a description of the characteristics of the goods or services concerned or whether it is reasonable to assume that that might be the case in the future (see to that effect Windsurfing Chiemsee, paragraph 31).”

The paragraph of Chiemsee referred to is that which requires an association, implying that 'currently associated' and 'liable to be used in future' shall be understood in the same way as 'currently represents' and 'that might be the case in the future', and thus reinforcing the view that the 'association' which the ECJ has in mind is the understanding that the product in some way originates in the geographical place.

Comment
The Court of Patent Appeals’ interpretation of Chiemsee as requiring a qualitative association is not in line with the statements of the ECJ. The EU Trademarks Directive does not explicitly require a qualitative association for the application of the descriptiveness provision and, even though Chiemsee mentions an “association”, it should be clear in light of later case law (eg, C-363/09) that this need not be qualitative. The OHIM manual also confirms this.

Instead, Chiemsee should be construed as finding that it is sufficient for an application to be refused if it consists of a geographical term which may (now or in the future) be understood by the relevant public to indicate the geographical origin of a product, notwithstanding whether the relevant public associates (or may in future associate) such place with particular qualities or other characteristics of the product in question.

Following the Court of Patent Appeals' interpretation, any sign consisting of a descriptive term together with a geographical term may be registered as a trademark, provided that the place indicated by that geographical term is not (and is not likely to become) qualitatively associated with the goods or services in question, even where the geographical term would be readily understood as indicating the geographical origin of the goods or services. Such an interpretation would enable the registration of clearly descriptive signs as trademarks.