Cheesemakers refused trademark for ‘emmentaler’ by EU court

German public see it as a type of cheese as opposed to its geographical origin

Switzerland, the home of emmental cheese Boris Stroujko

Cheesemaker group Emmentaler Switzerland has failed to trademark the word  ‘emmentaler’ at the General Court of the Court of Justice of the European Union.

The General Court in Emmentaler Switzerland v. EUIPO found that the ‘mark applied for is descriptive of a type of cheese for the relevant German public and is not perceived as an indication of the geographical origin of that cheese’, the general court therefore concluded that it did not enjoy protection as a collective mark. A collective mark is a specific type of trademark which indicates that the goods or services bearing the mark originate from members of a trade association, rather than just one trader.

Cheesemakers Emmentaler Switzerland had obtained from the World Intellectual Property Organization the international registration of the word sign EMMENTALER for goods corresponding to the description “cheeses with the protected designation of origin ‘emmentaler’”.

Emmentaler (or Emmental cheese) is a medium-hard cheese originating in the area around Emmental, Switzerland.

That international registration was notified to the European Union Intellectual Property Office (EUIPO), but the examiner rejected the application for the EU trademark registration. Emmentaler Switzerland lodged an appeal, which was subsequently dismissed by the Second Board of Appeal of EUIPO, on the ground that the mark applied for was descriptive.

Discussing its finding, the General Court said in order for the registration of a sign to be refused, it was sufficient that the sign have a descriptive character in part of the European Union, which may be a single member state, Germany in this instance.

The General Court held that the Board of Appeal was entitled to conclude that the mark applied for is descriptive, without it being necessary to examine the elements which do not concern the perception of the relevant German public.

Discussing its refusal of the collective mark, it said signs or indications which may serve, in trade, to designate the geographical origin of the goods or services in question may constitute EU collective marks. That derogation must however be interpreted strictly and, since the German public perceived the mark as a type of cheese as opposed to a geographical origin, it could not be designated with a collective mark.

Emmentaler Switzerland director Urs Schluechter said the court “has ruled on the protection of Emmentaler as a collective trademark in the EU. This decision is not yet final and has no bearing on the existing protection of Emmentaler in the countries with which Switzerland has concluded state treaties on the protection of indications of source. We will take our time to examine the decision and then decide whether or not to file an appeal against it with the ECJ.”

Commenting on the case, associate and attorney at law at IP firm Mewburn Ellis, Emily Sullivan, said: “The  outcome is not entirely surprising. ‘Emmentaler’ is in the dictionary, and it’s been used for centuries for a variety of cheese. That being said, the German dictionary Duden does refer to it as a ‘Swiss’ cheese, so ‘Swiss’ Emmentaler might be the original variety. There’s even a protected designation of origin (PDO) for ‘Allgäuer Emmentaler’. Allgau is a region in southern Germany, and the registration papers for the PDO ‘Alläuger Emmentaler’ specifically reference its Swiss origins. That being said, it’s sufficient if it’s descriptive for a part of the public and the threshold for descriptiveness isn’t very high.”

She continued: “In a similar position, brand owners can consider reregistering the mark with a more specific geographical indication. Since the mark was a collective mark, Emmentaler Switzerland could consider reregistering as ‘Swiss Emmentaler’ – or ‘Emmentaler Switzerland’. Alternately, they could consider a figurative mark.”

Recently French and Swiss consortiums failed to convince a US appeals court that only cheese made in the Gruyère region of France and Switzerland can be labelled Gruyère cheese.

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