COLLECTIVE TRADEMARK AND GEOGRAPHICAL INDICATION: THE CUMULATION OF THE TWO PROTECTIONS IS POSSIBLE EVEN IN CASE THE SIGNS UNDER COMPARISON ARE SIMILAR OR IDENTICAL.

On December 18^th, 2020, the Consortium for the Protection of the Grana Padano Cheese filed the application for registration no. 18358002 for the sign    as an EU collective figurative trademark for the following goods in Class 29, as amended on July 7^th, 2021: Cheese complying with the specification of the protected designation of origin “Grana Padano”.

On October 28^th, 2021, the appointed EUIPO examiner issued a provisional refusal against the registration of the aforementioned trademark pursuant to Article 76(2) EUTMR with respect to the goods claimed at the time of filing the application.

Article 76(2) EUTMR provides that an application for an EU collective trademark must be refused if there is the risk that the public is misled as to the character or meaning of the trademark, in particular if it gives the impression that it is not a collective trademark.

In the present case, the examiner’s objection was mainly based on the following observations:

• The sign subject of the application contains the protected designation of origin GRANA PADANO and is almost identical to the logo contained in the product specification for the PDO in in question. 
• The logo contained in the product specification for a protected designation of origin or a protected geographical indication must be used by any producer whose products comply with the product specification, irrespective of whether they are a member of the consortium for the protection of that PDO or PGI.
• Therefore, the public may be misled in relation to the character or meaning of the trademark, because this element may be considered as a protected designation of origin rather than as a collective trademark, the function of which is to indicate an association membership.

Notwithstanding the arguments raised by the applicant, i.e. the Consortium, in his/her evaluation, by decision of May 5^th, 2022, the examiner entirely refused the registration of the trademark pursuant to Article 76(2) EUTMR.

The decision on the refusal of the registration was appealed by the Consortium for the Protection of the Grana Padano cheese and the Fifth Board of Appeal of EUIPO ruled on the appeal by decision of November 15^th, 2023 (R 1073/2022-5) https://euipo.europa.eu/eSearchCLW/#key/trademark/APL_20231115_R1073_2022-5_018358002 by annulling the contested decision in its entirety.

In the explanatory statement, in addition to Article 76(2) EUTMR, the Board of Appeal also refers to Article 74(1) EUTMR, according to which the essential function of European collective trademarks is to distinguish the goods or services of the members of the association which owns them from those of other companies. Moreover, according to Article 74(2) EUTMR, also the European collective trademarks that are descriptive of the geographical origin must be able to fulfil the essential function of a collective trademark, that is, to indicate the collective commercial origin of the goods sold under that trademark.

The Board clarifies that, in accordance with the general principles of trademark law, the misleading nature referred to in Article 76(2) EUTMR must be assessed in relation to the perception that the relevant public has when in contact with the trademark, for example at the time of the purchase decision.

The decision also points out that the EUTMR does not expressly prohibit the cumulation of the protections conferred by the collective trademark and the geographical indication, even if the signs in question are similar or identical. Furthermore, the Board advises that there are no judgments of the Court of Justice denying a possible relevance of the regulation on the use of the collective trademark in order to clarify its scope of protection, nor a possible overlap between the areas of protection of geographical indications and the aforementioned trademarks.

In addition, the (different) ways in which the collective trademark and the geographical indication sign are used are another relevant factor in order to exclude the application of prohibition on registration laid down in Article 76(2) EUTMR; the Board considers that sometimes, as in the present case, the regulation on the use of the collective trademark may help understand the scope of protection of the trademark itself. In fact, the conditions of use of the trademark with which the consumer comes into contact depend on the rules laid down in the regulation on the use.

In the present case, the regulation on the use of the collective trademark clarifies that the sign will be affixed, subject to the authorisation of the Consortium, only on the packaging of Grana Padano cheese, while the geographical indication sign will be affixed to the cheese wheels; therefore, the conditions of use of the sign in question are not the same as those of the geographical indication one. In fact, the PDO sign can be freely used by anyone who meets the quality requirements set out in the Grana Padano PDO product specification, while the collective trademark will be only used with authorisation and on the packaging of the portioned product.

The Board points out that precisely to preserve the unitary nature of the protection system of geographical indications and with the main objective of protecting the consumer, it is necessary to allow the cumulative protection, bearing in mind that, in the present case, the signs are not identical, but just similar, used in different ways and on different products (the former on the cheese as such, the latter on portioned and packaged cheese), depending on the type of protection they belong to.

Finally, the Board declares that the fact that the applicant is the institution officially responsible for protecting and promoting the “Grana Padano” cheese, albeit not sufficient in itself to rule out any misleading nature, undoubtedly plays in favour of that result, since it represents an additional guarantee for the consumer.

Moreover, the fact that the entities to whom the authorisation to use the collective trademark may be granted must necessarily be individuals who already have the right to use the PDO sign on wheels of cheese, denotes the existence of an additional level of protection given by the collective trademark, which guarantees, in people’s eyes, the origin of the product packaged by the Consortium itself. This is a form of added value which could not be guaranteed nor provided by the geographical indication alone and which the collective trademark only can grant.

For the aforementioned reasons, the Board maintains that the sign subject of the trademark application is not misleading in the eyes of the relevant public as to the nature of the trademark, pursuant to Article 76(2) EUTMR, and that the registration process of the collective trademark at issue may thus continue.

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