A decision brewing: Advocate General opinion on DARJEELING cases
The Advocate General (AG) has recently given his opinion on some interesting points on geographical indications and collective marks. These cases concern The Tea Board's opposition against Delta Lingerie, a French lingerie company's applications for four figurative marks incorporating DARJEELING for lingerie in class 25, related retail services in class 35 and services in class 38, on the basis of The Tea Board's earlier EU collective mark for DARJEELING covering "tea" in class 30. The Tea Board's mark was also a protected geographical indication under Regulation 510/2006 (the "PGI" Regulation).
The AG has advised the CJEU to dismiss the Tea Board's four joined appeals and Delta Lingerie's cross-appeals in relation to the oppositions against Delta Lingerie's registrations of the DARJEELING marks.
The law
An EU collective mark is a mark that belongs to a legal person of public law or to an association, such as associations of manufacturers, producers, service suppliers or traders. There are various provisions in the EU Trade Mark Regulation (EUTMR) which govern collective marks (from Art 66 EUTMR onwards) including that signs or indications that designate geographical origin may constitute collective marks (in contrast to an individual mark where this would be seen to be descriptive and prevent registration). By comparison, a protected geographical indication ("PGI") is a sign used on products/foodstuffs that are produced, processed or prepared in a particular geographical area, in this case Darjeeling tea. Other examples in the UK include Cornish sardines and Yorkshire Wensleydale cheese.
Background
The General Court had previously confirmed the Board of Appeal's position that due to the large difference in goods/services, even though the Tea Board's DARJEELING marks had acquired distinctive character, there was no likelihood of confusion. Whilst the public may believe that the goods/services under the signs had the same geographical origin, this was not enough to establish similarity or identity between the goods/services covered by the respective marks.
However, the General Court disagreed with the Board of Appeal's position on the claim based on "earlier mark with a reputation" (Art 8(5) EUTMR), stating that the Board had simply noted that the Tea Board's DARJEELING marks had a reputation of "exceptional strength" but still found that the claim failed without fully analysing the issue of reputation and any link between the earlier mark and Delta Lingerie's applications. The General Court annulled this part of the decision (in relation to class 25 and some of the services in class 35) and asked the Board of Appeal to re-examine this issue, namely in relation to the possibility of a risk of an unfair advantage.
AG opinion
On appeal to the CJEU, the Tea Board argued that their PGI had not been properly taken into account by the General Court, resulting in the geographic origin of their goods/service being ignored and further an incorrect essential function to be applied to their marks (i.e. a function of commercial origin, rather than geographic).
The AG has clarified that when the opposed trade mark applications were filed, a PGI could not form the basis of an opposition under the law at that time and so The Tea Board should not be able to rely on this right or claim that this should have changed the previous analysis. Further, whilst the AG appreciated that when a collective mark is the basis of an opposition, the geographical origin of the goods or services may sometimes be taken into account if relevant, here the applicant's marks did not use the term "Darjeeling" as a geographical indication and so the relevant public was unlikely to believe that the services came from the Opponent (when assessing likelihood of confusion). Whilst a collective mark can indicate geographic origin, its essential function is still to distinguish commercial, as opposed to geographic, origin.
There was also a cross-appeal from the applicant that the General Court had made errors of law. However the AG held that both grounds of cross-appeal were based on a misreading of the judgment and as such recommended that this also be dismissed.
Comment
We await the CJEU decision to see whether this opinion is followed and hope that the CJEU sets a precedent on the correct approach to be taken when an opposition is based on an earlier collective mark that refers to geographical origin.
Postscript
Following the CJEU judgment on 20 September 2017, we now know that the AG opinion discussed above was followed and both the appeal and cross-appeal were dismissed (The Tea Board v EUIPO C-673/15 P to C-676/15 P (four joint appeals), 20 September 2017).