Consejo Regulador de la Denominación de Origen Txakoli de Álava and Others

(Community trade mark – Application for Community collective verbal mark TXAKOLI – Absolute grounds for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009 – Article 66(2) of Regulation No 207/2009 – Lack of distinctive character – Article 7(1)(b) of Regulation No 207/2009)

Summary of the Judgment

(Council Regulation No 1493/1999, Art. 47(2)(e); Commission Regulation No 753/2002, Art. 23)

(Council Regulations No 207/2009, Arts 7(1)(c) and 66(2), and No 1234/2007)

1.The distinction between geographical indications, in a broad sense, and traditional complementary terms was clearly set out in Regulation No 1493/1999 on the common organisation of the market in wine, the basic regulation before Regulation No 1234/2007, establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation), and on which Regulation No 753/2002 laying down certain rules for applying Regulation No 1493/1999 as regards the description, designation, presentation and protection of certain wine sector products was based, for it stated at Article 47(2)(e) that the rules relating to the description, designation and presentation of certain products covered by that regulation, and the protection of certain particulars and terms, included, in particular, the objectives governing the use of geographical indications and traditional terms.

2.Among the latter, Article 23 of Regulation No 753/2002 – repealed by Regulation No 607/2009 laying down certain detailed rules for the implementation of Regulation No 479/2008 as regards protected designations of origin and geographical indications, traditional terms, labelling and presentation of certain wine sector products – defined other traditional terms as ‘additional terms traditionally used in producer Member States to designate, in the case of wines (table wines with geographical indications and quality wines produced in a specified region), the production or ageing method or the quality, colour, type of place, or a particular event linked to the history of the wine concerned and defined in a Member State’s legislation for the purposes of designating the wines concerned originating in its territory’. The other traditional terms within the meaning of Regulation No 753/2002 were, consequently, terms designating certain characteristic features of wine, the place or production or its history and not its geographical provenance.

(see paras 27-28)

4.As regards the very specific wine market, in the context of assessing an application for registration lodged with the Office for Harmonisation in the Internal Market (Trade Marks and Designs), to accept that the word applied for designates or may serve to designate, in normal usage from the point of view of the relevant public, a country as the geographical provenance for the wine at issue would amount to encroaching on the powers of the authorities intervening in the procedures intended to create new designations of origin or protected geographical indications containing that word or to increase the number of designations linked to those terms.

5.It is, however, for those authorities to determine, within the framework of their discretion and after assessing all the relevant circumstances, whether a word must be protected as a designation of geographic origin of a product, and in accordance with the specific procedure laid down in that respect by Regulation No 1234/2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation) which includes, in particular, specific rights for interested persons and includes the possibility of challenging the final decision of the Commission in that respect before the Union judicature.

(see paras 35-37)

Forms of order sought by the parties

10. The applicants claim, in essence, that the Court should:

– annul the contested decision;

– order OHIM to pay the costs.

– dismiss the action;

– order the applicants to pay the costs.

Law

12. The applicants put forward, essentially, two pleas in law, alleging, first, infringement of Article 66(2) of Regulation No 207/2009 and, second, infringement of Article 7(1)(b) of that regulation. In addition, they make certain statements of a political nature to support their claims and certain arguments concerning the principle of non-discrimination.

The first plea, alleging breach of Article 66(2) of Regulation No 207/2009

Arguments of the parties

13.

The applicants acknowledge that the word ‘txakoli’ constitutes a descriptive designation within the meaning of Article 7(1)(c) of Regulation No 207/2009, like any other traditional designations protected by Regulation No 753/2002, but claims that the absolute ground for refusal provided for in Article 7(1)(c) does not apply in this case. They thus maintain that the word ‘txakoli’ constitutes, in essence, an indication which may serve, in trade, to designate the geographical origin of goods and services at issue, and that it may consequently be registered under Article 66(2) of Regulation No 207/2009 which provides that, by derogation from Article 7(1)(c) of that regulation, such signs or indications may constitute Community collective marks.

14In that regard, the applicants claim in particular that, since Regulation No 753/2002 and the Spanish legislation recognise the other traditional designations ‘chacolí’ or ‘txakolina’ and ‘txakoli’ solely for wines with designation of origin of which they are the regulatory boards, the word ‘txakoli’ serves to identify those wines exclusively and may not be used by wine producers outside the zones concerned by those designations of origin. In particular, the applicants assert that, in order for a word be recognised as a traditional term, what is important is that, together with the geographical indication of wines, the word should be associated with the origin of the characteristic features of the wines it designates. The applicants add that the relevant public associate the word ‘txakoli’ with the Basque Country (Spain), owing to its origin and its spelling, and consider, consequently, that word to be an indicator of geographical origin.

15Furthermore, the applicants refer to the registration of certain allegedly comparable marks.

16OHIM challenges those arguments.

Findings of the General Court

17Under Article 7(1)(c) of Regulation No 207/2009, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

18Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all (Case C-191/01 P, OHIM v Wrigley [2003] ECR I-12447, paragraph 31, and the judgment of 25 March 2009 in Case T-343/07 allsafe Jungfalk v OHIM (ALLSAFE), not published in the ECR, paragraph 20).

19The signs and indications referred to in Article 7(l)(c) of Regulation No 207/2009 are thus only those which may serve in normal usage, from the point of view of the relevant public, to designate, either directly or by reference to one of their essential characteristics, goods or services in respect of which registration is sought (ALLSAFE, paragraph 21). That is the case where there is, for the relevant public, a direct and specific relationship between the word sign in question and the products covered (see, to that effect, Case T-311/02 Lissotschenko and Hentze v OHIM (LIMO) [2004] ECR II-2957, paragraph 30, and Case T-173/03 Geddes v OHIM (NURSERYROOM) [2004] ECR II-4165, paragraph 20).

20Therefore, the distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been sought and, second, by reference to the perception which the relevant public has of those goods or services (see, by analogy, Case T‑79/00 Rewe‑Zentral v OHIM (LITE) [2002] ECR II‑705, paragraph 27, and Joined Cases T‑79/01 and T‑86/01 Bosch v OHIM (Kit Pro and Kit Super Pro) [2002] ECR II‑4881, paragraph 20).

Furthermore, Article 66 of Regulation No 207/2009 provides:

‘(1) A Community collective mark shall be a Community trade mark which is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings. …

(2) In derogation from Article 7(1)(c), signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute Community collective marks within the meaning of paragraph 1 …’.

22In the present case, confirming the assessment of the examiner, the Board of Appeal found that, from the point of view of the relevant public, namely, the average Basque and Spanish consumer, the word ‘txakoli’ designated the type of wine for which registration had been sought and to which the services at issue referred, and consequently it ran foul of the ground for refusal provided for in Article 7(1)(c) of Regulation No 207/2009.

23First of all, even if the applicants do not contest the definition of the relevant public found by the Board of Appeal, since the word ‘txakoli’ or ‘chacolí’ designates the type of wine for which registration was sought (see paragraph 3 above) and there is no translation of it into other languages of the Union, there is no reason to limit the relevant public to Basque and Spanish consumers only. That statement, however, has no consequences for the Board of Appeal’s assessment.

24The applicants maintain that the word ‘txakoli’ constitutes, in essence, an indication which may serve, in trade, to designate the geographical provenance of goods and services for which registration was sought under Article 66(2) of Regulation No 207/2009 because, on the one hand, it is another traditional term protected by Regulation No 753/2002 and therefore exclusively reserved for wines which show their designation of origin and, on the other, it is of Basque origin and is written in Basque.

25It must be noted that Regulation No 753/2002, relied upon by the applicants, was repealed, between the date when the contested decision was adopted and the introduction of the action, by Commission Regulation (EC) No 607/2009 of 14 July 2009 laying down certain detailed rules for the implementation of Council Regulation (EC) No 479/2008 as regards protected designations of origin and geographical indications, traditional terms, labelling and presentation of certain wine sector products (OJ 2002 L 193, p. 60). Regulation No 607/2009 like Regulation No 753/2002, recognises the terms ‘chacolí’ and ‘txakolina’ in connection with the wines with designated origin for which the applicants are the regulatory boards. By contrast, in accordance with the new basic regulation, Council Regulation (EC) No 1234/2007 of 22 October 2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation) (OJ 2007 L 299, p. 1), as amended, it no longer uses the phrase ‘other traditional term’.

26As regards, in the first place, the applicants’ arguments seeking to show that the word ‘txakoli’ is a geographical indication, it must be noted that, even if that word, which the applicants claim, is equivalent to the words ‘chacolí’ and ‘txakolina’, it, like them, constitutes no more than an ‘other traditional term’ within the meaning of Article 23 of Regulation No 753/2002 and not a protected designation of origin or a protected geographical indication. Protected designations of origin included in the wine regulation are ‘txakoli de Álava’, ‘txakoli de Bizkaia’ and ‘txakoli de Getaria’ and include, together with the word ‘txakoli’, the name of a region or a specified place indicating the actual geographical provenance of the wine at issue accordingly authorised by the second paragraph of Article 52(1) of Council Regulation (EC) No 1493/1999 of 17 May 1999 on the common organisation of the market in wine (OJ 1999 L 179, p. 1) – the basic regulation before Regulation No 1234/2007 on which Regulation No 753/2002 was based – which provided that Member States might authorise the name of a specified region to be accompanied by details relating, in particular, to the type of product.

27The distinction between geographical indications, in a broad sense, and traditional terms was clearly set out in Regulation No 1493/1999, for it stated at Article 47(2)(e) that the rules relating to the description, designation and presentation of certain products covered by that regulation, and the protection of certain particulars and terms, included, in particular, the objectives governing the use of geographical indications and traditional terms.

28Among the latter, Article 23 of Regulation No 753/2002 defined other traditional terms as ‘additional terms traditionally used in producer Member States to designate, in the case of wines (table wines with geographical indications and quality wines produced in a specified region), the production or ageing method or the quality, colour, type of place, or a particular event linked to the history of the wine concerned and defined in a Member State’s legislation for the purposes of designating the wines concerned originating in its territory’. The other traditional terms within the meaning of Regulation No 753/2002 were, consequently, terms designating certain characteristic features of wine, the place or production or its history and not its geographical provenance.

29That finding is confirmed by the fact that many traditional terms protected by Regulation No 753/2002 and, currently, by Regulation No 607/2009, are linked to a large number of designations of origin, covering sometimes an entire Member State, even several, thereby making it impossible to consider that qualifying a word as an ‘other traditional term’ has the effect of transforming it into a geographical indication and still less to consider that that qualification does no more than confirm that the word already constituted in itself a geographical indication of origin of wines.

30Moreover, contrary to what the applicants claim, Regulation No 753/2002 did not provide that, in order for a word be recognised as a traditional term, it, together with the geographical indication of the wines, should be associated with the origin of the characteristics of the wines it designates.

31Admittedly, Article 24(6) of the first version of Regulation No 753/2002 stated that ‘traditional terms’ were intended to identify those wines as originating in that region where the characteristic of the wine, as expressed by the traditional term concerned, was essentially attributable to that geographical origin. That paragraph, inter alia, was however deleted with effect from 1 February 2004 by Article 1(4) of Commission Regulation (EC) No 316/2004 of 20 February 2004 amending Regulation (EC) No 753/2002 (OJ 2002 L 55, p. 16). It is clear from recitals 2 and 3 of Regulation No 316/2004 that the deletion was intended to respond to criticisms made by certain non-Member States alleging that that provision reserved certain ‘traditional terms’, namely, those appearing in the list including the terms ‘chacolí’ and ‘txakolina’, to wines from the European Union only.

32The action brought by the Italian Republic against Regulation No 316/2004, in the context of which the Italian Republic alleged that the ‘traditional terms’ simply formed a whole with the geographic indications, was dismissed by judgment of the Court of First Instance of 15 March 2006 in Case T-226/04 Italy v Commission [2006], not published in the ECR.

33In the light of these factors, it must be acknowledged that even if the regulation associates the words ‘chacolí’ or ‘txakolina’, or yet the word ‘txakoli’, with wines with designations of origin for which the applicants are the regulatory boards, the wine regulation relied on by the applicants regards those words as merely an indication of the characteristic of wines and not as an indication of their geographical provenance, despite the link supposedly existing between those words, ‘txakoli’ in particular, and the Basque Country.

34Therefore, the applicant’s arguments according to which that word constitutes, in substance, a geographical indication, must be dismissed.

35In any event, it is to be observed that inasmuch as Article 66(2) of Regulation No 207/2009 provides an exception to the ground for refusal under Article 7(1)(c) of that regulation, it must not be interpreted broadly by including the signs comprising a geographical indication solely on the substance (see, to that effect, Case T-190/03 Olesen v Commission [2005] ECR I‑A‑181 and ECR II-805, paragraph 47).

36Moreover, it is important to note that, as regards the very specific wine market, in the context of assessing the application for registration lodged by the applicants with OHIM, to accept that the word ‘txakoli’ designates or may serve to designate, in normal usage from the point of view of the relevant public, the Basque Country as the geographical provenance for the wine at issue, would amount to encroaching on the powers of the authorities intervening in the procedures intended to create new designations of origin or protected geographical indications containing that word (or its equivalents, ‘chacolí’ or ‘txakolina’), or to increase the number of designations linked to those terms.

37It is, however, for those authorities to determine, within the framework of their discretion and after assessing all the relevant circumstances such as those discussed by the parties in this case, whether the word ‘txakoli’ must be protected as a designation of geographic origin of the wine at issue, and in accordance with the specific procedure laid down in that respect by Regulation No 1234/2007, which includes, in particular, specific rights for interested persons and includes the possibility of challenging the final decision of the Commission in that respect before the union judicature.

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Language of the case: German.

With regard, in the second place, to the registered marks relied upon by the applicants, it follows from settled case-law that the decisions concerning registration of a sign as a Community trade mark which OHIM’s Boards of Appeal are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on that of previous decision-making practice (Case C-412/05 P Alcon v OHIM [2007] ECR I‑3569, paragraph 65, and Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 71).

In any event, the fact remains that the marks cited by the applicants are not relevant in this case, for it concerns individual marks not falling foul of the ground for refusal under Article 7(1)(c), and not descriptive collective marks having been registered under Article 66(2) of Regulation No 207/2009. In particular, the first two are figurative marks including, in addition to the words cited by the applicants, ‘zumo’ and ‘don sabor mosto’, very distinctive figurative features. As regards the word mark MOSTO, ‘mosto’ meaning grape must in Spanish, it must be noted that, contrary to what the applicants claim, that mark was not registered for grape must.

It follows from the foregoing that the Board of Appeal did not err in not applying Article 66(2) of Regulation No 207/2009 for the purposes of rejecting the ground for refusal under Article 7(1)(c) of that regulation.

The second plea, alleging breach of Article 7(1)(b) of Regulation No 207/2009

Arguments of the parties

41The applicants claim that, in order for a traditional term to be protected by Regulation No 753/2002, it must evoke a geographical indication that serves to link it to a region and they maintain that the distinctive character of the word ‘txakoli’ arises from its direct link with the Basque Country, that link being shown by the fact that it is reserved to the designations of origin for which they are the regulatory boards. They add that the exclusivity of the use of the word ‘txakoli’ comes from its qualification as a ‘traditional term’ in that regulation in connection with their designations of origin.

42The applicants maintain, purely for information, that their position is confirmed by a judgment of the Tribunal Superior de Justicia (High Court of Justice) of the Basque Country of 4 June 2007, on the legality of a fine imposed on a Basque producer having used that word to designate its wines, which found that the word ‘txakoli’ could not be used by operators having no right to one of the applicants’ designations of origin and that, together with those designations, it was linked to the origin of the characteristics it described.

43On the basis of the national rules on designations of origin for which they are the regulatory boards, the applicants claim that the words ‘chacolí’, ‘txakoli’ or ‘txakolina’ are specific in themselves, and, having been precisely defined in those rules, enjoy a reputation and distinctive character acquired as a result of the efforts of wine growers and producers entitled to use those designations of origin.

OHIM challenges those arguments.

Findings of the General Court

45It is clear that the applicants confine themselves, in essence, to repeating the arguments that they raised in support of their first plea and that have been rejected above.

46As regards their argument that the exclusivity of the word ‘txakoli’ follows from its qualification as a ‘traditional term’ by Regulation No 753/2002, it must be noted that, even assuming that that exclusivity is real – which, moreover, the Board of Appeal accepted, even if OHIM does not share that view – that exclusivity is not relevant in the context of the assessment of the application for registration which the applicants made to OHIM and which forms the subject-matter of the contested decision. Indeed, the exclusivity conferred by other provisions of Union law cannot automatically imply the registration of a sign at issue as a Community mark. Such registration confers specific rights on its proprietor, including the option of benefiting from exclusivity for an unlimited time – provided that the formalities for renewing the mark have been completed (see Article 46 of Regulation No 207/2009) – that do not flow from other rules such as those falling within the sphere of agricultural policy.

47As regards the judgment of the Tribunal Superior de Justicia of 4 June 2007, it must be noted that the applicants acknowledge that it is only referred to for information. In any event, in accordance with settled case-law, decisions of national courts are merely one factor which may only be taken into consideration, without being given decisive weight, in the registration of a Community trade mark (Case T‑337/99 Henkel v OHIM (Round red and white tablet) [2001] ECR II‑2597, paragraph 58; see also, to that effect, Case T‑129/04 Develey v OHIM (Shape of a plastic bottle) [2006] ECR II‑811, paragraph 32). It follows from the assessment above that the arguments which the applicants invoke from that judgment are either unfounded or irrelevant.

48As regards, finally, the argument that the words ‘chacolí’, ‘txakoli’ or ‘txakolina’ are themselves specific and enjoy a distinctive character and reputation, it must be noted that those conditions were required by Article 24(5) of Regulation No 753/2002 in order for it to be possible for a word to be classed as a ‘traditional term’ and are, consequently, common to all those terms. Taking account of the respective aims of Regulations No 753/2002 and No 207/2009, the distinctive character to which the first of those regulations referred was whether the word could identify a particular characteristic of the wine at issue and not whether it could distinguish the goods or services of an undertaking from those of other undertakings within the meaning of Article 4 of Regulation No 207/2009. Recognition of a distinctive character and a reputation for a word in the context of its classification as a ‘traditional term’ is, therefore, irrelevant in the present case.

49In those circumstances, the plea alleging infringement of Article 7(1)(b) of Regulation No 207/2009 must be rejected.

The arguments based on certain statements of a political nature and those concerning the principle of non-discrimination

Arguments of the parties

50The applicants submitted to the General Court official statements of the Parliament of the Autonomous Community of the Basque Country, the General Councils of Álava (Juntas Generales de Álava) and a Spanish Parliament committee in which those bodies support their claim for the exclusive use of the words ‘txakoli’ and ‘chacolí’ in their territory. The applicants claim that those statements seek to support the word ‘txakoli’ and claim exclusivity for that word.

51In addition, they claim that the contested decision denies the factual and legal reality which protects them in order to use the word ‘txakoli’ as one of the indicators of the Basque Country and thereby significantly and unjustifiably discriminates against them in relation to other wines and geographical zones in Spain and the Union. Moreover, after the oral procedure had been closed, they submitted documents to the General Court on a parliamentary question and the Commission’s response to that question, which, in their view, show that it would be impossible for them to defend their interests against producers who use the word ‘chacolí’ if the mark applied for were not registered.

OHIM challenges those arguments.

Findings of the General Court

53In the first place, it must be emphasised that the different bodies of OHIM and the General Court make their decisions quite independently of any adoption of political positions.

54Second, it must be stated that the refusal to register the mark applied for does not affect the exclusive right at present enjoyed by the applicants, to use the words ‘chacolí’, ‘txakolina’ and even ‘txakoli’, pursuant to the legislation on wine, and does not have the effect of authorising the use of that word for operators other than those who benefit from that right under that regulation, or of preventing the applicants from requiring observance of that legislation. In the light of that fact, the General Court found that it was not necessary to reopen the oral procedure and to place on the file the documents referred to at paragraph 51 above, produced by the applicants after that procedure had been closed.

55Third, the applicants give no details of their argument alleging the existence of discrimination and do not indicate what ‘other wines or geographical zones’, supposedly in the same situation, have obtained the registration of marks comprising a word which constitutes an ‘other traditional term’ and not a designation of origin or a protected geographical indication. As regards, in particular, the applicants’ contention that all traditional terms are descriptive words, the use of which is reserved for certain designations of origin, it is important to note that that contention is not relevant to the outcome of the present action given that that exclusivity is a consequence of the wine legislation only, whereas the applicants seek to benefit, in addition, from the exclusivity granted by the registering of a Community mark.

56Since those last arguments of the applicants must therefore also be disregarded, the action must be dismissed.

Costs

57Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party must be ordered to pay the costs if they have been asked for in the successful party’s pleadings. Since the applicants have been unsuccessful, they must, having regard to the form of order sought by OHIM, be ordered to pay the costs.

On those grounds,

hereby:

Dismisses the action.

Orders the Consejo Regulador de la Denominación de Origen Txakoli de Álava, the Consejo Regulador de la Denominación de Origen Txakoli de Bizkaia and the Consejo Regulador de la Denominación de Origen Txakoli de Getaria to pay the costs.

Czúcz

Labucka

O’Higgins

Delivered in open court in Luxembourg on 17 May 2011.

[Signatures]

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Language of the case: Spanish.