The protection of a trademark, which contains a geographical name, is a rather complicated issue. Many formalities need to be followed in order to register marks that indicate the geographical origin of a product, for example, the name of a city.
For high-quality marketing promotion of goods or services, it is not necessary to monopolize the registration of TM. However, geographic names may under certain conditions be protected as a trademark.
Let's take a concrete example - a trademark dispute between a mineral water producer and the European Union Intellectual Property Office regarding the registration of a trademark containing a geographical name.
Case details
The Bulgarian mineral water producer received the registration of the "D" trademark (conventional name). The Chamber of Commerce and Industry in Bulgaria has filed an application for invalidation of the registration of this trademark since the name contains the name of the Bulgarian city. The company filed a lawsuit against this claim and TM remained registered by the court decision.
The EU Bureau of Intellectual Property concluded that the city of D. is known to the general public in Bulgaria and, at least, to a significant share of consumers in neighboring countries such as Romania, in particular as a thermal resort. The name of the city in the trademark will be directly related to the mineral waters.
Ruling on the case
In turn, the court did not agree with such statements of the Bulgarian Chamber of Commerce and Industry and with their request to annul the TM. Foreign consumers in the European Union are unaware of the tiny Bulgarian town of D. with a population of about 7,000. That is, they will not establish a direct connection with this city.
As for consumers in Bulgaria, the peculiarity was that the name "D" was already known as a trademark of mineral water. Although a Bulgarian consumer can recognize a geographical name in a word, the fact that the mark has formed a distinctive feature of the TM in Bulgaria and earned a certain reputation precludes the possibility of its cancellation (according to the EU Trade Mark Regulation). The Court also pointed out that the descriptive use of the “D” designation can be used to promote tourism in the city, and thus is in the general interest.
For manufacturers who use geographic names for their products, the above example may be the basis for registering their TM with an indication of a specific geographic name. Under certain conditions, they can protect trademarks throughout Europe.
The IQ Decision UK team will provide you with comprehensive assistance for the successful registration of a trademark in the European Union.
