Collective marks and protected designations of origin (PDOs) have different functions and confer different levels of protection. While the function of a collective mark is to indicate membership of an association, a PDO identifies and protects the goods of a particular region. An association of protection of a PDO may apply to register a collective mark incorporating that PDO, to obtain cumulative protection, but this can present some obstacles.
In a recent decision (case R-1073/2022-5), the Fifth Board of Appeal of the EUIPO (“Board”) clarified the relationship between collective marks and PDOs. The Board granted the Consortium for the protection of Grana Padano cheese (“Consortium”) cumulative protection by allowing it to register a collective mark for a logo which was similar to the logo contained in the product specification for the PDO ‘Grana Padano’.
In December 2020, the Consortium made an EUTM application to register this figurative mark as a collective mark (“Collective Mark”) for products in class 29 (cheese complying with the specifications of the protected designation of origin ‘Grana Padano’)
The EUIPO issued a refusal of registration on the grounds that the above Collective Mark was almost identical to the logo contained in the specification of the Grana Padano PDO (see below, on the right). As this PDO logo must be used by all Grana Padano producers whose products comply with the specifications, regardless of whether they are members of the Consortium, the examiner was of the view that the Collective Mark could mislead the public since it may be seen as a PDO logo rather than a collective mark, the purpose of which is to indicate membership of an association.
The Consortium appealed to the Board on the following grounds:
- Use of the Collective Mark on packaging was not mandatory, however when used (subject to the necessary authorisation), it would only be used on the packaging of Grana Padano cheese unlike the PDO logo which was required to be used on the Grana Padano wheels themselves.
- Entities wishing to use the Collective Mark on packaging would be subject to stricter requirements. This would introduce uniform specifications in respect of the graphic elements present on product packaging and would allow the product to be immediately identifiable on shelves.
- By failing to understand that the Collective Mark applied for was not to be used in the same way as the PDO logo but rather that it was ancillary to it, the examiner had denied the Consortium of a form of protection provided for by law.
- The Consortium emphasised that the protection provided by the PDO was only to the name “Grana Padano” and not to particular graphics or colours.
- That the public may not be properly protected if a trade mark similar to the Collective Mark was to be filed without the words “Grana Padano” (or with a different expression) as the PDO alone would not afford such protection.
The Board’s decision
Lack of deceptiveness
In its decision, the Board referred to Article 76(2) of the European Union Trademark Regulations (“EUTMR”) under which an application for an EU collective mark will be refused if there is a risk that the public will be misled as to the character or the significance of the mark, in particular if the mark is likely to create the impression that it is not a collective mark. The Board stated that the deceptiveness referred to in Article 76(2) EUTMR must be assessed with regard to the perception that the public will have when coming into contact with the mark, such as at the time of the purchase.
The Board highlighted that even where the signs in question are similar or identical, the EUTMR does not expressly prohibit the cumulative protections conferred by the collective mark and the geographical indication regimes. The Board noted that the two signs in this case were not identical but were only partially similar, and it could not be ruled out that a consumer may be able to notice the differences between them, especially the differences relating to the absence of the letters “G” and “P” in the Collective Mark.
It was noted that if the two signs were necessarily dissimilar, then consumers may believe that there was a difference in the quality or ingredients between the “whole” product (the Grana Padano wheel) and the portioned product (sliced or grated Grana Padano). The Board therefore stated that it was appropriate to allow the cumulative protection of the signs in order to maintain the unitary nature for the protection of the name Grana Padano.
The Board further considered that any entity authorised by the Consortium to use the Collective Mark would already be entitled to use the PDO logo, which would afford an additional level of protection by guaranteeing the origin of the product to the public, thereby providing a form of added value which the PDO alone would not be able to provide.
Consequently, the Board held that the Collective Mark was not misleading to the public.
The Board then considered whether the Collective Mark had distinctive character. After the appeal, the Rapporteur had expressed concerns as to the distinctive character under Article 7(1)(b) EUTMR, stating that the Collective Mark was almost identical to the PDO logo and therefore could not fulfil the essential function of a trade mark.
The Board stated that when applying for an EU collective mark which also designates a PDO, the collective mark should contain elements which enable consumers to distinguish the goods or services of its members from those of other undertakings (BBQLOUMI C-766/18P).
The Board was of the opinion that the relevant public would not confuse the Collective Mark with the PDO because the signs were not identical and their methods of use were different. The public would always see the Collective Mark on the packaging and the PDO logo only on the cheese wheel and never on the packaging.
In light of its reasoning regarding the lack of deceptiveness of the Collective Mark, the Board held that the arguments for lack of distinctive character also failed. The Collective Mark had distinctive character and the trade mark did fulfil its essential (origin) function.
This decision clarifies the position that the protection of PDOs and collective marks can in fact be cumulative, in particular if they are used differently. The decision provides an additional scope of protection to PDO holders who may have previously been unable to enforce their rights on the basis of the PDO alone. Collective marks may provide added value as seen in this case, where the Collective Mark was thought to provide a guarantee of the origin of the product which was complementary to the guarantee of quality provided by the PDO.
Article co-authored by Amanjyot Bahia, Trainee Solicitor at CMS.