Locations
The General Court has rejected applications to declare invalid two registered trade marks for MONTANA on the grounds that they are descriptive (Franz Schröder GmbH & Co KG v EUIPO, T-855/19 and 856/19).
Background
In 2005, the predecessor of the current trade mark owner obtained 2 EU designations of the International trade marks MONTANA and MONTANA (stylised). These designations cover class 20 (furniture), class 37 (mounting and installation of displays, installation, building and other services) and class 42 (architecture and industrial design). In 2017, Franz Schröder GmbH & Co KG (the "Applicant") applied to declare the designations invalid on the grounds that they were descriptive under what is now Article 7(1)(c) of EU Trade Mark Regulation 2017/1001.
The Cancellation Division of the EUIPO declared the marks invalid finding that they described the geographical origin of the goods and services in question. The Board of Appeal disagreed stating that it had taken into account all of the evidence placed before it, although emphasising that evidence filed late by the trade mark owner did not determine the outcome of the proceedings. It also stated that it was not prevented from examining of its own account whether the absolute ground for invalidity applied.
The Board held that the word MONTANA would not be seen by the relevant public as describing the geographical origin of the goods and services. The Applicant appealed to the General Court on various grounds (including procedural grounds). In this blog we focus on the issue of descriptiveness.
Applicant's arguments
Is the term MONTANA distinctive for a furniture brand or descriptive of a geographical indication? The Applicant argued that at least a significant part of the relevant public would know of the US state of Montana and rejected the finding of the Board of Appeal that the relevant public would not be likely to associate "Montana" with the goods and service in question. The Applicant claimed that there is a presumption that names of countries, regions and major cities are signs which describe the geographical origin of goods and services.
The Applicant claimed that many craftsmen and companies want to use the term "Montana" as reflected by the certification system "Made in Montana". It further submitted that Montana was a place suitable for companies who manufacture and distribute furniture and that "Montana" could have a positive image for consumers as it conveyed an image of "large, natural, wild, mountainous and forested areas with housing consisting of log cabins or log houses which contain wooden furniture".
General Court's ruling
The General Court stated that there is no general presumption that a geographical name may serve in trade to designate origin. The question is rather is the geographical name unknown to the relevant public (or at least unknown as describing a geographical location) or a name in respect of which, because of the type of place it designates, the relevant public is unlikely to believe that the goods and services originate there or are conceived of there.
The court agreed with the Board of Appeal's finding that the registered trade marks would not be perceived as a reference to the US state of Montana including the fact that, although it is the fourth largest US state, it is ranked only 44 out of 50 in terms of population and is "little known to the relevant public". It stated that other states such as California or Florida are more popular tourist destinations and Montana does not have any cities to which the relevant public would be likely to go for city trips.
The relevant public's knowledge of the geographical name is only one factor to be taken into account in deciding whether a mark is descriptive. All relevant factors such as the nature of the goods and services, the reputation of the geographical location and the relevant public's familiarity with it and the customs in the area of activity should be taken into account.
The court agreed with the Board of Appeal that the landscape of Montana was varied so the relevant public would not associate that state with forests. In addition the evidence provided by the Applicant did not show public would know that furniture or lumber-related activities took place in Montana. Although the Applicant had given details of companies who manufacture furniture in Montana, it had not established that the furniture sector was important to Montana's economy or gave rise to numerous exports to the EU. The evidence did not show the relevant public would recognise the state of Montana as a well-known site for the production of furniture.
The introduction of the certification system (Made in Montana) was found to be irrelevant as it was an internal US qualification and not exclusively used in the furniture sector. The court also agreed with the Board of Appeal that the location where the furniture was manufactured was usually irrelevant and the same applied to installation and architecture and design services. It also agreed that the term "Montana" was not associated with any general positive image.
Consequently, all of the Applicant's arguments failed and the registrations were found to be valid. (See the judgments here: T-855/19 and T-856/19.)
Key takeaways
This is a helpful reminder from the General Court on to the registrability of geographical terms. The court reiterated that there is no automatic presumption that geographical names are non-distinctive and therefore ineligible for registration. Each case will depend on its own facts. It is up to an opponent or an applicant for a declaration of invalidity to establish on factual evidence that the relevant public would associate a geographical name with the goods or service in question.