Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 02/08/2019

J A KEMP

14 South Square

Gray's Inn

London WC1R 5JJ

REINO UNIDO

Application No:	018018303
Your reference:	TM406724EM/BRM
Trade mark:	CHALONE VINEYARD
Mark type:	Word mark
Applicant:	Foley Family Wines, Inc. 200 Concourse Blvd. Santa Rosa California 95403 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 15/02/2019 pursuant to Article 7(1)(j) EUTMR because it found that the trade mark applied for contains a protected designation for wines under the Agreement between the European Community and the United States of America on trade in wine. Additionally, the Office raised an objection pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

After an agreed extension of time, the applicant submitted its observations on 14/05/2019, which may be summarised as follows.

1. The applicant limits the list of goods to ‘wine complying with the specifications of the protected designation ‘Chalone’, as protected under the Agreement between the European Community and the United States of America on trade in wine’.

2. Chalone is an extremely small wine growing area, an AVA (American Viticultural Area), that takes its name from Chalone Peaks.

3. ‘Chalone’ wines are not well-known in the EU and it is unlikely that the average consumer would perceive it as a geographical location. A search on UK’s major supermarket websites (Sainsburys, Waitrose, Tesco and Asda) did not reveal any findings for ‘Chalone’.

4. The mark applied for is ‘Chalone Vineyard’ not ‘Chalone’. The mark has been registered in the United States since 1985 (a registration certificate from USPTO was submitted). Additionally the mark has been in use since 1970. It would be impossible and illegal for a third party to export wine under this exact mark from the US into the EU. Only wine from Chalone region can be marked with the word ‘Chalone’ (alone) and only the applicant can export wine marked with ‘Chalone Vineyard’ from the US into the EU.

Pursuant to Article 94 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has proceeded to restrict the scope of protection of the EUTM application as indicated by the applicant and, consequently, has decided to waive the objection pursuant to Article 7(1)(j) EUTMR.

Nevertheless, after giving due consideration to the applicant’s arguments in respect of the objections raised pursuant to Article 7(1)(b) and (c) and Article 7(2)EUTMR, the Office has decided to maintain the objection.

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

According to Article 7(2) of the Agreement between the European Community and the United States of America on trade in wine, ‘the Community shall provide that the names of viticultural significance listed in Annex V may be used as names of origin for wine only to designate wines of the origin indicated by such name’. The name ‘Chalone’ is listed in Annex V of the Agreement, which can be consulted at https://eur-lex.europa.eu/legal-content/en/ALL/?uri=CELEX:22006A0324(01) .

Therefore, the term ‘Chalone’ enjoys protection throughout the European Union in accordance with the provisions of the Agreement and, as such, is descriptive of the geographical origin of the products throughout the EU territory.

The fact that a search in the internet did not produce any results for the word ‘Chalone’ or the relatively small size of the area in comparison to other American Viticultural Areas, cannot counterbalance the binding effect of the legal provisions and agreements signed between the European Union and the United States of America.

Moreover, as the applicant acknowledged, the refusal is based on the perception of the English-speaking consumer in the EU. In fact, the use of the word ‘vineyard’ in the mark does not endorse it with any distinctive character. Indeed it merely describes the type of agricultural business; namely, an area of land where grape vines are grown in order to produce wine.

Therefore, and contrary to the applicant’s arguments, the protected designation ‘Chalone’ may be used by any operator marketing a wine which has been produced in conformity with the corresponding product specification. The protected designation ‘Chalone’ shall be protected against any commercial use that hampers the free use of the denomination by any undertaking whose product complies with the specifications of the protected designation. Since the mark applied for describes the type of agricultural business in which the wines are produced (vineyard) and the geographical origin of the products and the location of that business (Chalone), such free use would be hampered; consequently, the mark applied for cannot succeed for registration.

Finally, as regards the USPTO registration referred to by the applicant, according to case law the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted in a country belonging to the linguistic area in which the word sign in question originated (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 18 018 303, ‘CHALONE VINEYARD’, is hereby rejected for all the goods claimed.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Octavio MONGE GONZALVO