Trade mark courts worldwide spend a good deal of time deciding what trade marks cheese manufacturers can register (e.g. Danish Feta. American Gruyère. BBQLOUMI). In case number T-2/21, the European Court decided that “EMMENTALER” was descriptive for the German public.
Background
With a thousand year old cheesemaking tradition, courts are regularly called on to decide if the name of a certain variety of cheese represents traditional characteristics from a certain area or just a certain style. Where Parmigiano Reggiano is a protected designation of origin from certain regions of Italy produced with raw cows’ milk, Camembert is simply a type. Because the tradition spans such a long period, regional traditions and recipes have become widespread. What was once very clearly a regional designation can turn into a generic description for a product.
Under certain circumstances, delicacies can be protected with “protected geographical indications” (PGI) or other quality schemes that are offered by both the EU and UK. Since obtaining a PGI is an extensive process, associations often decide to register a collective mark (or a collective international registration) as an initial step. Unlike normal trade marks, collective marks can be registered under EU law even if they consist of (normally descriptive) geographical indications, so registering a preparatory collective mark can be a good first step.
Recently, the European Court was asked to decide on the appeal of Emmentaler Switzerland, from the Emme Valley (in German: “Emmental”), regarding the registration of their EU designation of the collective “EMMENTALER” international registration. The European Office for Intellectual Property (EUIPO) – followed by the Board of Appeals – had refused protection of the collective international registration, stating that the term “EMMENTALER” would be understood as a type of cheese by the German public and therefore was descriptive.
Emmentaler Switzerland appealed this decision to the European Court. The grounds of appeal included:
- Descriptiveness – the Board of Appeals did not properly review the evidence regarding descriptiveness and apply relevant law; and
- Protection of a collective mark as a geographical indication – the Board of Appeals did not properly apply the exception that allows collective marks to be registered even if they consist of a geographical indication.
Descriptiveness
Under the EU trade mark regulation (EUTMR), a trade mark cannot be registered if it consists exclusively of a sign that is descriptive of the goods offered in any part of the European Union. A sign is considered descriptive under the EUTMR if it suggests a sufficiently direct and concrete link to the goods in question and enables the relevant public to immediately perceive a description of the goods in question or one of their characteristics.
The EUIPO, supported by multiple third-party statements, argued that the word “EMMENTALER” would be understood by the relevant public as a generic type of cheese – and not a specific Swiss cheese. They brought forth several pieces of evidence:
- References to a standard German dictionary, where “Emmentaler” is defined as a “full-fat Swiss cheese with cherry-sized holes and the taste of walnuts; emmental cheese”;
- Evidence regarding the production of “emmentaler” cheese in Germany;
- The German Cheese Regulation, which states that “Emmentaler” is a standard type of cheese;
- The EU’s position in the negotiations of the Agreement of 17 May 2011 between the EU and the Swiss Confederation on the protection of designations of origin and geographical indications for agricultural products and foodstuffs, where the EU opposed the inclusion of the designation “Emmentaler” due to its descriptiveness;
- A collection of internationally recognized food standards (Codex Alimentarius), where “Emmental” is referred to as a type of cheese; and
- The judgement of the Court of Justice from 5 December 2000 in C-448/98, where the Court confirmed that Emmental is lawfully manufactured in EU countries (including, but not limited to, France).
The European Court concluded that, from this evidence, the Board of Appeals was entitled to conclude that the German public would immediately understand the word “EMMENTALER” as a type of cheese. They reiterated that it was sufficient for the descriptiveness to exist in a single Member State of the EU and rejected Emmentaler Switzerland’s plea.
Perception as a geographical indication
Emmentaler Switzerland’s other plea was directed at the exception allowing collective marks to be registered even if they are geographical indications. Generally, geographical indications fall under the category “descriptive” and normal trade marks consisting of geographical indications cannot be registered. The EUTMR provides an exception for collective marks. While collective marks may not be otherwise descriptive, they may include geographical indications. The European Court confirmed that this exception can only be used on geographical indications, and is not transferrable to other descriptive properties, such as indications descriptive of type.
The European Court had already confirmed that the Board of Appeals hat not erred when finding that the sign was descriptive as a standard type of cheese for the German public. Because “EMMENTALER” was descriptive of a type of cheese, it couldn’t benefit from the exception allowing geographical indications to be registered as a collective mark.
Take away points
With their decision on 24 May 2023, the European Court upheld the Board of Appeals’ decision to refuse protection for Emmentaler Switzerland’s collective international registration. For Germans, “Emmentaler” is quite clearly descriptive for a cheese.
Emmentaler Switzerland can appeal the decision to the Court of Justice; however, they’ll have to request that the appeal be allowed to proceed and set out an issue raised in the appeal that is significant with respect to the unity, consistency or development of the European Union law. Generally, this hurdle is quite difficult to overcome.
Protecting culinary and agricultural specialities
Cheesemaking and other culinary traditions go back thousands of years. Culinary traditions and traditional agricultural products are afforded protection worldwide by international treaties. So, what options do associations who produce culinary and agricultural specialities have to protect their intellectual property?
The EU and the UK both acknowledge the impact of these traditional delicacies by granting them special designations held on certain registers, e. g. the respective EU and UK registers for “protected geographical indications” (PGI) or “protected designation of origins” (PDO). Once an association has gone through the process of having a PGI or PDO registered, they can often take measures to ensure that the quality standards associated with the PGI or PDO can be enforced.
Even if a culinary tradition or agricultural product doesn’t meet the requirements for a PGI or PDO, associations should consider registering a collective mark to ensure protection against misuse of regional designations.
Read the full decision here.
