When registering a trademark, including a European Union trademark, we must remember that the relevant office may refuse registration if the application does not meet certain requirements. Most often, trademarks "that are devoid of any distinctive character," "that consist exclusively of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services, or other characteristics of goods and services," and "that consist exclusively of signs or indications that have become common parlance or are customarily used in honest and established trade practices," are not registered.
Trademarks that fall into any of the above categories are defined as descriptive marks. Protection cannot be granted to such marks without preventing other entities from using them on the market. In its judgment of May 24, 2023, in Case T-2/21 | Emmentaler Switzerland/EUIPO (EMMENTALER), the European Court of Justice found that Emmentaler is widely recognized as a type of cheese. To determine whether a given mark is descriptive, it is necessary to analyze how it will be perceived by consumers of a given type of service or goods. Consequently, the name "Emmentaler" could certainly be registered, for example, for hotel services, but in the case of food products, every purchaser will associate it with a commonly used term for a type of cheese. This Court's ruling is not surprising, considering that a contrary ruling would lead to blocking the use of the name Emmentaler by other entities operating in the food industry.
Importantly, neither the European Union Intellectual Property Office nor the EU Courts have to prove that the mark is descriptive throughout the European Union; it is sufficient that it will be perceived as such by the public in a specific territory, in this case Germany.
Taking into account the above ruling, entities registering trademarks must always remember that their registration may be refused by the Office, in situations where the descriptive nature is less obvious than in the case in question, but it is worth attempting registration.
This alert is for informational purposes only and does not constitute legal advice.
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