Trademark containing the reproduction of the PGI symbol: the decision of the EU Court

By decision of December 1st 2021, pronounced in case T-700/20, the Court of the European Union ruled on a case of invalidity of a trademark containing the reproduction of the PGI symbol (Protected Geographical Indication).

In particular, the EU Court decided that the Board of Appeals of the European Union Intellectual Property Office erred in law for failing to examine whether the reproduction of the PGI symbol, in the contested trademark, could risk to lead the public to think that the products covered by such mark benefited from the warranty of the protected geographical indication.

The trademark in question (registered on February 9, 2021 with number 010108454 for the class 29) is the following reproduction of PGI symbol

The Board, confirming the decision of the EUIPO’s Invalidity Division on such title, rejected the appeal of the owner considering that the trademark had been registered in violation of art. 7 (1)(i) of the 207/1001 Regulation (now EU regulation 2017/1001 on European trademark).

In its decision in particular, the Board found that:

  1. the contested sign included the PGI symbol PGI symbolin its entirety and neither the right nor the obligation to use said symbol included the right to obtain the protection as an aspect of a trademark;
  2. the PGI symbol represented a particular public interest because it was to be applied on products corresponding to a protected geographical indication.

For the above-mentioned reasons, it was the Board’s opinion that the trademark had to be annulled.

In return to the appeal of the owner, the EU Court, intervening on the case, stated that the Board of Appeals did not examine the third condition by which the reason of the rejection of the registration can be opposed in accordance to art. 7 (1)(i) of the 207/2009 regulation.

Such reason consists in evaluating if, due to the presence of reproduction of the PGI symbol in the contested trademark, the public risks to believe that the products covered by such trademark benefit from the approval or warranty of the authority to which this symbol refers to, i.e. the European Union, or is somehow connected to it.

In particular, in the decision of the Court it is stated that “the Board of Appeal did not examine, in the contested decision, whether the way in which the PGI symbol was incorporated into the contested mark could lead the public to believe that the goods covered by that mark had the warranty of the European Union and that those goods had a certain origin and properties which met the conditions set out in Regulation No 1151/2012 in order to benefit from protection under protected geographical indications”.

In the opinion of the European Judge, therefore, the decision of the Euipo Board of Appeal must be annulled.

The Board, as a matter of fact, by confirming the annulment of the trademark under exam, erred in law for failing to rule on one of the cumulative conditions to which the actuation of the protection in art. 7 (1)(i) of the 207/2009 regulation (now Eu regulation n. 2017/1001) is subordinated.