The European Union’s General Court has ruled in a judgment from May 24, 2023, that the word “Emmentaler” cannot be protected as a trademark for cheese from Switzerland (case ref.: T-2/21).
While it is true that indications of geographical origin may be eligible for trademark protection, it is important that they not have a primarily descriptive character, with this requirement serving as an obstacle to trademark registration, notes MTR Legal Rechtsanwälte, a commercial law firm whose practice includes IP and trademark law.
And this is exactly what the European Union Intellectual Property Office (EUIPO) identified in a trademark application submitted for Emmentaler cheese. The cheesemaker group Emmentaler Switzerland had sought to have “Emmentaler” registered as a word mark for cheese from Emmental in Switzerland. The goal behind this move was to ensure that only cheese from Switzerland could be referred to as Emmentaler. This would have entailed other producers being required to make reference to the region of origin, e.g., Emmentaler from Allgäu in southern Germany.
But the application was rejected by the EUIPO, and the General Court has since followed suit. The latter concluded that to the relevant German public the word “Emmentaler” describes a type of cheese and is not perceived as an indication of the geographical origin of that cheese. It could therefore be said that the word is viewed in at least one EU member state as having a descriptive character, reason enough to reject its registration as a trademark according to the General Court. Indeed, this obstacle to registration means that the word is not eligible for protection as a trademark.
The ruling does not mean that geographical indications cannot benefit from trademark protection as a protected designation of origin or a protected geographical indication, especially in cases where an indication of origin evokes particular associations in the minds of consumers with respect to quality or taste. One such case saw Hamburg’s higher regional court – the Oberlandesgericht (OLG) Hamburg – rule that only Scottish whisky may use the word “glen” in its branding, as this gives the impression that the whisky in question comes from Scotland.
That case is but one of many cases, which is why it is always necessary for there to be a case-by-case assessment of whether an application to trademark a designation of origin is viable.
Anyone with trademark-related questions or concerns can turn to the legal experts at MTR Legal Rechtsanwälte.