Case T‑510/15

Roberto Mengozzi

v

European Union Intellectual Property Office

(EU trade mark — Invalidity proceedings — EU word mark TOSCORO — Earlier protected geographical indication ‘Toscano’ — Absolute ground for refusal — Article 142 of Regulation (EC) No 40/94 — Articles 13 and 14 of Regulation (EEC) No 2081/92 — Declaration of partial invalidity)

Summary — Judgment of the General Court (Seventh Chamber), 2 February 2017

Community trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — EUIPO’s previous decision-making practice — Principle of legality — Need for a strict and complete examination in each particular case

Agriculture — Uniform legislation — Protection of geographical indications and designations of origin for agricultural products and foodstuffs — Regulation No 2081/92 — Conflict between geographical indications and trade marks — Refusal to register a trade mark corresponding to one of the situations referred to in Article 13 and concerning the same type of product — Same type of product — Concept

Agriculture — Uniform legislation — Protection of geographical indications and designations of origin for agricultural products and foodstuffs — Regulation No 2081/92 — Protection of registered names — Evocation of a registered name — Evocation of a protected geographical indication (Toscano) by the name ‘toscoro’

Agriculture — Uniform legislation — Protection of geographical indications and designations of origin for agricultural products and foodstuffs — Regulation No 2081/92 — Protection of registered names — Evocation of a registered name — Concept — Criteria for assessment

Community trade mark — Surrender, revocation and invalidity — Claim for invalidity based on the existence of an earlier protected geographical indication — Compatibility of Regulation No 40/94 with Regulation No 2081/92

EU trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Re-evaluation of the facts in the light of evidence produced for the first time before it — Not included

See the text of the decision. (see para. 19)

See the text of the decision. (see para. 21)

The European Union Intellectual Property Office is obliged to apply Regulation No 40/94 in such a way as not to affect the protection granted to protected geographical indications (PGIs) by Regulation No 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs. In particular, EUIPO must, pursuant to Article 14(1) of Regulation No 2081/92, refuse to register any mark coming within one of the situations described in Article 13 of that regulation and relating to the same type of product and, if the mark has already been registered, must declare that registration invalid. (see para. 29)

Article 13(1)(b) of Regulation No 2081/92 provides that registered names shall be protected against any evocation, even if the true origin of the product is indicated. The concept of ‘evocation’, set out in Article 13(1)(b) of Regulation No 2081/92, covers a situation where the term used to designate a product incorporates part of a protected designation, with the result that, when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product the designation of which is protected. In that regard, account must be taken of the phonetic and visual similarity which might exist between the sales descriptions. Similarly, account must be taken, where appropriate, of the ‘conceptual proximity’ between terms emanating from different languages. There could be evocation of a protected designation even in the absence of any likelihood of confusion between the goods concerned, since what matters is, in particular, that an association of ideas regarding the origin of the products is not created in the mind of the public, and that a trader does not take undue advantage of the reputation of the protected geographical indication. (see paras 30, 31)

There is visual and phonetic similarity between the word mark TOSCORO and the earlier PGI Toscano. In that regard, it appears legitimate to take the view that the word ‘toscoro’ may evoke the PGI ‘Toscano’, when the consumer is confronted with goods of the same type as the product covered by the PGI. The visual and phonetic similarities will be such as to trigger in the consumer’s mind, as a reference image, the image of the olive oil benefiting from the PGI ‘Toscano’, when he is confronted with a product of the same kind bearing the name ‘toscoro’. (see paras 39, 41)

Article 14(1) of Regulation No 2081/92 provides for refusal to register any mark which is in one of the situations set out in Article 13 of that regulation and relating to the same type of product. The product at issue need not necessarily be identical to the product which forms the subject of the protected geographical indication, but it must share some common characteristics with that product. (see para. 44)