Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 09/06/2016

WYNNE-JONES, LAINE & JAMES LLP

Essex Place 22 Rodney Road

Cheltenham,

Gloucestershire GL50 1JJ

REINO UNIDO

Application No:	15 003 213
Your reference:	GJ/NAC/TM6792EU00
Trade mark:	THE CORNISH BAKERY
Mark type:	Figurative mark
Applicant:	Presto Retail Limited Paulton House, Old Mills, Paulton Bristol Bristol, City of BS39 7SX REINO UNIDO

The Office raised an objection on 29/01/2016 pursuant to Article 7(1)(k) CTMR because it found that the trade mark applied for contains a designation that is evocative of a protected geographical indication (PGI) that is protected under Council Regulation (EC) No 1151/2012 of 21/11/2012 (see the attached letter).

The applicant submitted its observations on 11/03/2016, which may be summarised as follows:

1. The applicant submits that it is not possible to comply with the limitation proposed by the Office (‘in conformity with the specifications of the protected geographical indication Cornish Pasty’) in respect of bread, cakes, confectionery, biscuits and pastry because, in the eyes of the consumer, the terms ‘CORNISH’ and ‘CORNISH PASTY’ are not evocative of the goods for which registration is sought.

2. In support of the abovementioned argument, the applicant submits exhibits that, in its opinion, demonstrate the differences between the goods in question, namely:

• Exhibit A – an extract from the Official Journal of the European Union in which the term ‘Cornish Pasty’ is defined;

• Exhibit B – an extract from the website of the Cornish Pasty Association specifying the ingredients of a genuine Cornish Pasty;

• Exhibit C – an extract from the website of the Federation of Bakers, which clearly states that bread is made up of flour, yeast, salt and water. Further, the applicant argues that there is a significant difference between the ingredients of a Cornish Pasty and bread, and therefore the consumer will not associate bread with a Cornish Pasty;

• Exhibit D – an extract from a popular baking website, which specifies how cakes are made and the ingredients use to make them. The applicant argues that the ingredients specified for cakes differ from those found in a Cornish Pasty because cakes do not contain beef, potato, swede, onion, salt and pepper;

• Exhibit E – an extract from a popular website advising consumers on recipes for various different dishes. In addition, the applicant submits that the term confectionery describes a broad variety of small sugar-based delicacies that are usually eaten with the fingers and that keep for a long time, and argues that there is an obvious and considerable difference between a Cornish Pasty and sweets and chocolate, and therefore the consumer will not see a link between the words ‘Cornish’ or ‘Cornish Pasty’ and confectionery;

• Exhibit F – an extract from the Food Network website in which a popular chef has outlined how to make biscuits and the ingredients used to make them. The applicant argues that there is an obvious difference between the ingredients required to make biscuits and the ingredients that go into making a Cornish Pasty and, consequently, the consumer will not consider ‘Cornish’ or ‘Cornish Pasty’ to be evocative of biscuits;

• Exhibit G – extract from the ‘All Recipes’ website, which outlines the most popular pastry-based foods. The applicant argues that there is a considerable difference between these foods and a Cornish Pasty, and that it is impossible to see how the consumer could associate the words ‘Cornish’ or ‘Cornish Pasty’ with pastries.

3. Bearing in mind Exhibits A-G, the applicant argues that there are considerable differences between a Cornish Pasty and bread, cakes, confectionery, biscuits and pastries, and it is difficult to see how a consumer would link the words ‘Cornish Pasty’ with such goods. In addition, the applicant submits that the term ‘evocation’ covers ‘a situation where the term used to designate a product incorporates part of a protected designation, so that when consumers encounter the name of the product, the image triggered in their minds is that of the product whose designation is protected’ and that the word ‘CORNISH’ does not evoke bread, cakes, confectionery, biscuits and pastries.

4. The applicant proposes the following limitation: ‘pasties and other baker’s wares in conformity with the specifications of the protected geographical indication Cornish Pasty’.

After giving due consideration to the applicant’s arguments, the Office has decided to waive the objection for the following goods:

Class 30 Pasties and other baker’s wares in conformity with the specifications of the protected geographical indication Cornish Pasty.

The objection is maintained for the remaining goods, namely for:

Class 30 Bread, pastry, confectionery; bakery goods; pasties.

Please note that, following the entry into force of Regulation No 2015/2424 amending the Community trade mark regulation on 23 March 2016 and the changes introduced by that regulation, Article 7(1)(k) CTMR was replaced by Article 7(1)(j) EUTMR. Consequently, in the following, the provisions of Article 7(1)(j) EUTMR will be used.

According to Article 7(1)(j) EUTMR, ‘trade marks which are excluded from registration, pursuant to Union legislation or national law or to international agreements to which the Union or the Member State concerned is party, providing for protection of designations of origin and geographical indications’ shall not be registered.

The Office takes note of the limitation by the applicant. However, the proposed limitation by the applicant targets only a part of the goods to which an objection has been raised, namely pasties and other baker’s wares in conformity with the specifications of the protected geographical indication Cornish Pasty, but the terms ‘bakery goods and pastries’ have not been deleted from the specification of the goods in Class 30. Therefore, the objection is also maintained for ‘bakery goods and pastries’.

The Office cannot agree with the applicant’s argument that in the eyes of the consumer the terms ‘CORNISH’ and ‘CORNISH PASTY’ are not evocative of goods such as ‘bread, cakes, confectionery, biscuits and pastry’ because there are significant differences between these products and ‘Cornish Pasty’ goods.

Further, the Office is not persuaded that the exhibits submitted by the applicant demonstrate the differences between the goods to which an objection has been raised and ‘Cornish Pasty’.

The trade mark applied for, ‘THE CORNISH BAKERY’, contains the designation ‘CORNISH’, which is evocative of the protected geographical indication ‘Cornish Pasty’ for agricultural products and foodstuffs.

This designation is protected under Regulation (EU) No 1151/2012 of 21/11/2012 for the following goods: bread, pastry, cakes, confectionery, biscuits and other baker’s wares.

It should be observed, as also indicated in Exhibit A, that the Cornish Pasty Association is the only organisation representing the collective interests of producers of the genuine Cornish Pasty, a product that was granted the PGI on 11/08/2011. According to the Official Journal of the European Union, presented by the applicant in Exhibit A, the description of the agricultural product or foodstuff ‘Cornish Pasty’ is the following:

Class 2.3. bread, pastry, cakes, confectionery, biscuits and other baker’s wares.

The trade mark application, after limitation, covers, inter alia, bread, pastry, confectionery, bakery goods, pasties in Class 30, without any limitation as to their origin. Therefore, according to the legal provisions of the specification of the PGI ‘Cornish Pasty’, bread, pastry, confectionery, bakery goods, pasties need to originate from the geographical indication featured in the trade mark applied for.

In the present case, the goods to which an objection has been raised are not of the origin indicated by the geographical indication featured in the trade mark applied for. It follows that the trade mark must be refused under Article 7(1)(j) EUTMR.

The Office agrees with the applicant’s argument that the term ‘evocation’ covers ‘a situation where the term used to designate a product incorporates part of a protected designation, so that when consumer encounter the name of the product, the image triggered in their minds is that of the product whose designation is protected’. However, the Office fails to see how the word ‘CORNISH’ is not evocative in relation to the goods to which an objection has been raised, including the fact that the legal provisions of the specification of the PGI describe the type of product ‘Cornish Pasty’ (bread, pastry, cakes, confectionery, biscuits and other baker’s wares).

Please note that the Office finds that there is evocation or imitation of a protected designation of origin (PDO) where the EUTM incorporates the geographically significant part (in the sense that it is not the generic element) of the PDO/PGI; this is clearly applicable in the present case.

Please note that the protection is granted to PDOs/PGIs in order, inter alia, to protect the legitimate interests of consumers and producers. In particular, the specific objectives of protecting designations of origin and geographical indications are to secure a fair return for farmers and producers for the qualities and characteristics of a given product, or of its mode of production, and to provide clear information on products with specific characteristics linked to geographical origin, thereby enabling consumers to make more informed purchasing choices (see recital 18 of Regulation (EU) No 1151/2012). Moreover, their protection aims to ensure that they are used fairly and to prevent practices liable to mislead consumers (see recital 29 of Regulation (EU) No 1151/2012).

For the abovementioned reasons, and pursuant to Article 7(1)(j) EUTMR, the application for figurative European Union trade mark No 15 003 213 is hereby rejected for the following goods:

Class 30 Bread, pastry, confectionery; bakery goods; pasties.

The application is accepted for the remaining goods and services:

Class 16 Paper and cardboard products, namely cartons, napkins, packaging, bags, towels, boxes and containers.

Class 21 Containers and plates; cups and bowls; drinking vessels; stirrers; lunch boxes; bowls; pots; plastic drinking vessels; serving trays and platters; drinking straws; plates; plastic lids; disposable drinking vessels; paper and cardboard products, namely trays and cups; cardboard holders for cups; cardboard cup sleeves.

Class 30 Coffee, tea; flour; edible ices; sandwiches; prepared meals; pizzas, pies and pasta dishes; pasties and other baker’s wares in conformity with the specifications of the protected geographical indication Cornish Pasty.

Class 43 Cafe, restaurant and snack bar services; catering services for the provision of food and drink; bakery services for the provision of food and drink.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Roxana PISLARU