A. INTRODUCTION
In which cases the trademarks that are solely comprised of names of geographical locations or that contain names of geographical locations as the primary distinctive element may be registered constitutes one of the controversial topics of trademark examination.
In EUIPO Grand Board of Appeal's "INMOBILIARIA PORTIXOL" decision to be dealt with in this article, the subject is discussed on the axis of the question of what should be the level of recognition by the related segment of the public of the specific geographical location requested to be registered, and a step is taken towards unification of general practices of EUIPO Boards of Appeal.
B. TRADEMARK REQUESTED TO BE INVALIDATED AND EUIPO CANCELLATION DIVISION'S DECISION
On 26 November 2013, Concominvest SLU applied for the registration of "INMOBILIARIA PORTIXOL" word mark for "real estate (brokerage) services" in class 36. This application was registered on 11 April 2014.
On 12 June 2015, Mallorca Mietboerse S.L. claimed the invalidation of this trademark for all services covered by the registration. Included among the leading reasons relied upon by the claim of invalidation are the arguments that "PORTIXOL" is the name of an ancient settlement in Palma de Mallorca city of Spain, and this location is fairly known well also by foreigners wishing to purchase real estates in that area, and is therefore a descriptive name and does not have any distinguishing character.
In the claim of invalidation, it is argued that said trademark makes a reference only to a geographical location where the subject services are offered, and that the graphical elements used therein do not add any distinctive character to the trademark as well. "INMOBILIARIA PORTIXOL" phrase created by combination of the word "INMOBILIARIA" meaning "real estate broker" and the word "PORTIXOL" being the name of a geographical location cannot, according to the applicant for invalidation, be allowed to be monopolized by a single person and its registration is unlawful because its registration precludes third parties engaged in the same services from using this descriptive expression in their business. Furthermore, Mallorca Mietboerse S.L. also emphasized that it is offering real estate brokerage services by using this expression since more than 15 years, and the trademark holder, being cognizant of this fact, has applied for registration of the same expression in the same sector, thus acting in bad faith. The applicant has presented evidence in order to prove its arguments cited above.
The Cancellation Division reviewed all arguments, evidence and answers presented in the course of proceedings, and took a decision on 17 December 2015. In this decision:
As for descriptiveness and distinctiveness
- Based on the evidence presented, and the word elements of the trademark, it is concluded that "PORTIXOL" is not a name commonly known by the general public, and thus, the allegation of common recognition and use by the general public could not be proven.
- It is also stated that the evidence furnished to prove the relationship between the registered trademark and the "real estate (brokerage) services" under registration are not found adequate to prove the correlation between said services and the trademark or the existence of a foreseeable danger as to association by consumers in the future. Furthermore, it is opined that "PORTIXOL" word is not directly related to "real estate (brokerage) services", and that consumers seeing or hearing this word do not visualize "real estate (brokerage) services".
Although the word "INMOBILIARIA" is descriptive for "real estate (brokerage) services" due to its direct lexical meaning, as the trademark under examination must be considered and reviewed as a whole, it is finally decided that the trademark is not descriptive and is distinctive.
As for the alleged bad faith
Noting that the conditions sought for a bad faith act are not satisfied, and Mallorca Mietboerse S.L. has failed to prove the alleged bad faith act with sufficient evidence, it is also decided to dismiss this argument as well.
As for the alleged ownership of right based upon nonregistered use
Mallorca Mietboerse S.L. has also failed to prove this argument by giving no information about the alleged nonregistered use and protection. Therefore, this argument of the claimant is also dismissed.
C. EXAMINATION BY THE GRAND BOARD OF APPEAL
On 16 February 2016, Mallorca Mietboerse S.L. filed an appeal against the decision of the Cancellation Division. At this stage, the evidence already presented to the Cancellation Division are provided again, and the argument that the registered trademark is descriptive and is not distinctive is repeated together with the bad faith act argument. The Board of Appeal started its examination in the light of all information and documents furnished to it.
Having determined that there are contradictory decisions issued previously about descriptiveness of trademarks that are solely comprised of names of geographical locations or that contain names of geographical locations as primary distinctive element, and that there is no unification in the approach adopted in relation therewith, EUIPO First Board of Appeal has escalated the dispute directly to EUIPO Grand Board of Appeal without entering into substantial examination in respect of the appeal filed to it.
We would like to remind that EUIPO Grand Board of Appeal, abbreviated as Grand Board, is a type of supreme board which is composed of nine members and to which the Boards of Appeal escalate the cases which are found of substantial importance or subject to prior contradictory Board decisions. This Board shall hereinafter be shortly referred to as "Grand Board".
We are now going to summarize the decision taken by the Grand Board on 10 June 2021 about the appeal, as may be seen in https://euipo.europa.eu/eSearchCLW/#basic/*///number/0368%2F2016:
The Grand Board has approved the assessment of the Cancellation Division concluding that the word "INMOBILIARIA" is not distinctive, and is similarly used in many different languages, and each of them stands for "real estate services (real estate brokerage) office", and it is therefore descriptive and is not distinctive.
In its examination relating to the word "PORTIXOL", reminding the general criteria required to be taken into consideration in deciding whether a phrase is distinctive or not, the Grand Board stated that although Mallorca Mietboerse S.L. defines the consumer segment in relation with the word "PORTIXOL" as average consumers wishing to purchase or lease a real estate in "Portixol" district, as the trademark claimed to be invalidated is a European Union Trademark, the relevant public is the average consumer of the relevant services, in the whole EU territory. Accordingly, contrary to arguments of the applicant for invalidation, the Grand Board came to the conclusion that the examination and assessment cannot be kept limited only by consumers interested in real estates in "Portixol" district, which form only a very small part of the relevant consumers living within the European Union. Also, it is stressed out that bearing in mind the nature of the contested services namely 'real estate services', in Class 36, these services target professionals and the general public, and both categories will pay a high level of attention, since these services (may) have a direct impact on their economic and financial assets.
Two criteria are underlined in respect of registrability of names of geographical locations:
- First, names of geographical locations which are already famous and well-known for the related category of goods or services and have therefore already been associated with that category in the mind of related consumers are by no means registrable.
- Secondly, names of geographical locations which may probably be used by the general public as an indicator of geographical origin of the related category of goods or services and are therefore required to be kept open for use by the general public are not registrable either.
However, names of geographical locations which are not covered by the aforementioned criteria and are unknown by the related average consumers as geographical origin of goods or services or are unknown by the related average consumers at all are eligible for registration in all aspects.
Therefore, assessment relating to descriptiveness and distinctiveness of "INMOBILIARIA PORTIXOL" word mark must also be conducted within the frame of these main principles.
Though the applicant for invalidation argues that the word "PORTIXOL" is the name of a well-known touristic location of the region, the Grand Board, just like the Cancellation Division, does not accept this argument. Also according to the Grand Board, the segment required to be taken into consideration is the general public living in the European Union, and the general public does not know "PORTIXOL" expression, being the name of a district (village) in Palma de Mallorca city, as the name of a geographical location. The recognition of Palma de Mallorca city by the general consumer segments or the recognition of "PORTIXOL" expression by the local people as the name of a geographical location does not change the result either, because the applicant has failed to provide evidence proving the recognition of "PORTIXOL" expression by the general consumer segments of the European Union alone as the name of a geographical location.
In the assessment conducted in the light of the existing evidence, it is deemed necessary to dismiss the arguments as to descriptiveness and as to lack of distinctiveness. Furthermore, Mallorca Mietboerse S.L. has also failed to provide adequate evidence as to the probability of association in the future between "real estate (brokerage) services" on one side and "INMOBILIARIA PORTIXOL" on the other side, and the evidence presented also failed to prove and demonstrate an association between the registered trademark and the "real estate (brokerage) services" as of the date of application.
Noting that the conditions sought for in a bad faith act are not satisfied, it is deemed necessary to uphold the Cancellation Division's decision to dismiss the bad faith act allegation.
Moreover, as for the alleged ownership of right based upon nonregistered use, the applicant for invalidation has failed to present satisfactory evidence, and has only focused on distinctiveness and descriptiveness concepts in its appeal. Therefore, the Grand Board upheld also the decision taken by the Cancellation Division in relation therewith.
In dismissing the appeal, the Grand Board has laid a special emphasis on the principle that registered trademark owners are not allowed to preclude third parties from using this trademark name fairly and in the ordinary course of business. The reflection of this principle on the case in hand is the case of use of "Portixol" name by a third party descriptively in trade, and this use is required to be fair and in the ordinary course of business. Thus, the Grand Board has especially stressed out that the use of trademark by third parties as cited above cannot be prevented by the registered trademark holder.
As a conclusion, the Grand Board dismissed the appeal and upheld the Cancellation Division's decision by finding all arguments raised for the invalidity of registered trademark are unfounded and unproven.
D. CONCLUSION
EUIPO Grand Board of Appeal's "INMOBILIARIA PORTIXOL" decision has evidently put forth that one of the factors required to be taken into account in examination and assessment of trademarks that are solely comprised of names of geographical locations or that contain names of geographical locations as primary distinctive element is the level of recognition of the related geographical location name by the average consumers of the related goods or services. Accordingly, as long as the average consumers do not adequately know the name of the geographical location, it will not be possible to refuse the application (or if already registered, to invalidate the registration) on the ground of descriptiveness.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
