It is a basic principle of European Union trademark law that terms that are descriptive may not be registered as an EU trademark. Simply because a sign that merely describes the goods and/or services offered cannot be monopolized.
However if such descriptive term is combined with other figurative elements that make the sign as a whole distinctive the mark may be validly registered. In such cases the difficult question is: when is the mark figurative enough to reach the minimum degree of distinctive character that is required for a registration?
The General Court by its judgement dated 5-11-2019 in case T-361/18 (APEDA v. EUIPO) shows that the level of distinctiveness required to the figurative elements may be quite demanding.
Burraq Travel & Tours General Tourism Office SA, a company established in Greece, applied to register the following figurative sign (EUTM no. 13102454):
The application was filed to cover “rice” and other rice related goods in classes 30, 31 and 33 of the Nice Classification. The mark at issue was registered on 20 January 2015.
BASMATI is a registered Geographical Indication issued to the Basmati variety of rice grown in seven States in the Indo Gangetic Plain lying below the Himalayas.
The Agricultural and Processed Food Products Export Development Authority (APEDA) is the entity established by the Government of India that is the registered proprietor of the GI and responsible to put in place a system for administration of GI and authentication of the product.
APEDA applied for a declaration of invalidity of the mark registered by Burraq Travel claiming, among other grounds, that the mark at issue mark was descriptive.
Position of EUIPO
The invalidity claim was rejected by the Cancellation Division. On appeal the Board of Appeal confirmed the rejection stating that even though the words ‘basmati’ and ‘rice’ visible in the mark at issue lacked distinctive character for the goods in question in so far as Basmati rice was a variety of rice that was well known to the public in the European Union,
“the mark was not simply composed of the words ‘sir’, ‘basmati’ and ‘rice’, but of a relatively complex whole containing word, geometric, coloured and figurative elements which, taken together, undeniably had distinctive character compensating for and dominating the aforementioned words”.
On appeal APEDA alleged essentially that:
- It is well-known that Basmati rice comes from India or Pakistan
- The depiction of the turbaned man is also descriptive of the origin of the goods because it is well-known that the turban and specific outfit worn by the man in question clearly refer to India or Pakistan, where Basmati rice comes from.
In short the GC concluded the following:
- The marks is invalid because it is descriptive.
- The word ‘sir’ is not such as to confer any notable degree of distinctive character on the mark at issue, either in isolation or considered in the overall impression created by that mark.
- The term ‘Basmati’ does not denote a specific geographical name, but a variety of rice from a specific region of the world. However (contrary to the EUIPO’s understanding) the relevant public also perceives the word ‘basmati’ indirectly as referring to India.
- The turbaned man suggests an inhabitant of an oriental country without suggesting an exclusive link with India or Pakistan but in its overall perception, the mark is descriptive of the goods in question.
- There is no ‘complexity’ of the mark at issue since it is the result, more particularly, of various ‘usual or decorative’ elements.
- The TM representation simply reinforces the descriptive meaning of the word elements of the mark at issue, in so far as it refers to a particular type of rice which, contrary to the contested decision, is known to be grown in India.