11 Oct If it’s not from Ireland, it’s not Irish
Hijos de Moisés Rodríguez González, S.A. is a Spanish company located in Las Palmas de Gran Canaria. In 1967, it signed a contract with the Irish company, Ornua Co-operative Ltd, for the supply of butter. As a result of that contract and in the same year, Hijos de Moisés Rodríguez González, S.A. applied for the Spanish trademark ‘LA IRLANDESA’ to distinguish ‘all kind of butter’. This registration was followed by a series of other trademarks containing “LA IRLANDESA”, filed both before the Spanish Patent and Trademark Office (SPTO) and before the European Union Intellectual Property Office (EUIPO).
However, the commercial relationship between Hijos de Moisés Rodríguez González, S.A. and Ornua Co-operative Ltd ended in 2011 and, despite the termination of the commercial relationship, the Spanish company applied for new trademarks under the name “LA IRLANDESA”.
In 2015, after the trademarks applied for had already been granted, the Irish Government and Ornua Co-operative Ltd filed invalidity actions against these trademark registrations on two grounds:
- The marks at issue were liable to mislead the public, in this case, as to the geographical origin of the goods, in accordance with Article 7(1)(g) in conjunction with Article 59(1)(a) of the EU Trademark Regulation (EUTMR).
- Bad faith on the part of the applicant, in accordance with Article 59(1)(b) EUMR.
The Cancellation Division dismissed the invalidity actions on the grounds that any possible deception would result from the use of the mark, so that consumers were not proven to have been misled at the filing date of the application according to Article 7(1)(g) EUTMR. The Cancellation Division also dismissed the finding of bad faith.
The applicants for a declaration of invalidity appealed against one of the decisions of the Cancellation Division, in particular the one concerning EU trademark No. 12043436 for class 29. The Presidium of the Boards of Appeal remitted the case to the Grand Board of Appeal.
The Grand Board of Appeal issued its decision on 2 March 2020 and found that the mark at issue was liable to mislead the public, since the Spanish-speaking consumer would establish a geographical link with Ireland, when the products do not originate from that country. That geographical link would arise because the name ‘LA IRLANDESA’ is the dominant element of the sign and is presented on a green background identifying Ireland. Ireland’s reputation for its dairy products should be added to these elements.
The Grand Board of Appeal also found bad faith, as it considered that there was no commercial or economic rationale to justify the filing of the application after the contract with Ornua Co-operative Ltd had ended. In fact, according to the Grand Board, there was an interest in taking unfair advantage of an already terminated commercial relationship and an interest in misleading consumers given the good image and quality of Irish products.
Hijos de Moisés Rodríguez González, S.A. brought an action before the General Court of the European Union (Case T-306/20) against the decision of the Grand Board of Appeal. The General Court delivered its decision on 29 June 2022 dismissing the appeal.
With regard to the first ground of appeal, namely that the mark was liable to mislead the public as to the geographical origin of the goods, the Court clarifies that the date for analysing the invalidity of the mark is the date of filing of the application in relation to the goods or services to which it relates. These elements must be assessed together with the perception of the mark by the relevant public at that time. Subsequent use of the sign is therefore irrelevant. The Court considers that the Grand Board of Appeal was wrong to take into account evidence of use subsequent to the application for registration, such as catalogues from 2014 or photographs of the product from 2016. In this case, the Court recalls that, according to previous case-law, subsequent elements may be taken into consideration only if they affect the situation existing when the trademark application was filed.
The General Court concludes that, at the time the trademark application was filed, there was no contradiction between the information which the trademark at issue conveyed and the characteristics of the goods designated in that application, since they did not include any indication of their geographical origin. Consequently, the General Court considers that the trademark was not liable to mislead the consumers at the time of its application.
As regards the second plea, the existence of bad faith, the Court clarifies that bad faith must be examined globally, considering all the relevant factual circumstances of the case. These circumstances include the origin of the sign at issue, the subsequent use of the sign, the chronology of the events leading to the filing of the sign, and the applicant’s intention in filing the application, assessing it in the light of the objective circumstances of the case.
In analysing all these circumstances, the General Court concludes that the appellant continued to sell goods under the brand “LA IRLANDESA” when a not inconsiderable proportion of its goods were of non-Irish origin, with the result that the applicant wrongly sought to transfer to the sign applied for an advantage based on the association of Ireland with goods which do not have that geographical origin.
Furthermore, according to the Court, the fact that similar marks, with the element “LA IRLANDESA”, had previously been refused shows that the applicant was aware that the public was likely to be misled. Furthermore, the Court states that the appellant’s objective was to continue to benefit from the terminated business relationship.
Finally, the Court considers that all this confirms that the Appellant’s adoption of the commercial strategy around the brand “LA IRLANDESA” is contrary to honest practices in trade or commerce.
In this case, the General Court confirms the basis of assessment of the absolute grounds for invalidity under Article 7(1)(g) of the EUTMR and the assessment of bad faith under the current Article 59(1)(b) of the EUTMR. Although Hijos de Moisés Rodríguez González, S.A. has been marketing its products under the mark “LA IRLANDESA” since 1967, the termination of the contract with the Irish company Ornua Co-operative Ltd. implied a change in its commercial strategy, which could no longer be based on its relationship with Ireland.
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Author: Mercè Hernàndez, Lawyer