Fifth Board of Appeal of the European Union Intellectual Property Office [2021]: Torta del Casar v Queso de La Serena, Case No. R 696/2018-5
This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.
Session 3: Emerging Issues in Geographical Indications
Fifth Board of Appeal of the European Union Intellectual Property Office [2021]: Torta del Casar v Queso de La Serena, Case No. R 696/2018-5
Date of judgment: February 25, 2021
Issuing authority: Fifth Board of Appeal, European Union Intellectual Property Office
Level of the issuing authority: Appellate Instance
Type of procedure: Judicial (Civin( �br> Subject matter: Geographical Indications; Trademarks
Applicant/Respondent: Queso de La Serena
Opponent/Appellant: Torta del Casar
Keywords: Geographical indications, Trademarks, Likelihood of confusion, Protected Designation of Origin, Traditional name, Generic term, Evocation
Basic facts: The Regulatory Council of the Protected Designation of Origin (PDO) “Queso de La Serena” (the applicant) requested registration of the below trademark:
The Regulatory Council of the Designation of Origin “Torta del Casar” (the opponent) filed a notice of opposition against the goods and services in the contested trademark application, citing the below earlier marks:
(European Union trademark)
(National [Spanish] trademark)
The Opposition Division rejected the opposition in its entirety, finding there to be no risk of confusion because the term “torta” merely designated the rounded, flattened shape of a cheese.
The Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) upheld the decision of the Opposition Division, prompting the opponent to bring an action for annulment of that decision before the General Court. Finding there to be a likelihood of confusion, the General Court annulled the decision, and the appeal was reassigned to the Fifth Board of Appeal of the EUIPO.
The General Court has given the EUIPO the power to declare part of a registered PDO or protected geographical indication (PGI) generic.
Held: The Fifth Board of Appeal upheld the opponent’s appeal in its entirety, thus denying the registration of the applicant’s requested trademark.
Relevant holdings in relation to emerging issues in geographical indications: The Fifth Board of Appeal held that according to Article 2, paragraph 2 of Regulation (EC) 510/2006 (current EU Regulation 1151/2012), the term “Torta” of the PDO Torta del Casar is a traditional name. The Fifth BoA further noted that, from the evidence requested ex officio and following the relevant case law, the term “Torta” in relation to “Cheese” is not and has not become a generic term in accordance with Article 3, paragraph 1, letter a), Regulation (EC) 510/2006. Decisively in this regard, an expert report concluded that, unlike Torta del Casar, the PDO Queso de La Serena has not traditionally been identified with the name “Torta.”
The Fifth Board of Appeal concluded that the relative grounds for refusal enumerated in Article 8(4) of Regulation No. 207/2009, in combination with Article 14(1) and Article 13(1) of Regulation (EC) 510/2006, apply to the trademark application. The Fifth BoA found that the trademark application falls under the relative ground for refusal of Article 8(4) of Regulation No. 207/2009, insofar as the mark’s use would constitute an “evocation” of the name of origin Torta del Casar, within the meaning of Article 13, paragraph 1, letter b) of Regulation (EC) 510/2006 as interpreted by the jurisprudence of the Court of Justice, for “products of the same type” in the meaning of article 14, paragraph 1 of the same Regulation.
Relevant legislation:
Regulation (EC) 510/2006 (current Regulation (EU) 1151/2012))
Regulation No. 207/2009