Registering a name as a trade mark gives the owner exclusive rights to prevent others using the same name (or a confusingly similar name) in a commercial way for particular goods and services.
The question often arises whether place names can be registered as trade marks for goods or services. In general, geographical names are not registrable as trade marks if the place is currently associated with the goods or services in the mind of the consumer, or it is reasonable to assume the place will be associated with these goods or services. The test is whether the name is descriptive of objective characteristics of the goods or services, such as place of production of the goods, subject matter of the goods, or place where the services are rendered.
The Cancellation Division of the European Union Intellectual Property Office (EUIPO) recently considered these principles and declared a trade mark for an Irish place name invalid for meat and lamb products, restaurants, food service, holidays and holiday accommodation.
The case relates to Achill Island off the coast of County Mayo, Ireland, the largest island in the country and a popular tourist destination.
Uaineoil Sléibhe Acla Teoranta, an Irish company of Achill Island, Co. Mayo is the owner of EU Trade Mark No. 013435573 ‘ACHILL’ which was registered on 31 March 2015 for “Meat and meat products; lamb meat and lamb meat products; lamb meals and constituents of meals predominantly of lamb” (Class 29), “Equestrian holidays, holidays and holiday accommodation, holiday information; restaurant services; catering services” (Class 43) and “Healthcare services; health resort services; convalescent homes services; saunas, beauty salon services, sanatorium, hairdressing services; massage services; nursing services; baths for hygiene purposes and turkish baths; flower arranging; manicure services; physiotherapy” (Class 44).
On 24 August 2015 CaorAcla Limited filed an application at the EUIPO to cancel this trade mark registration on grounds of invalidity. The main ground relied on was that ‘ACHILL’ is a known geographical term which is descriptive as it indicates the geographical origin of the goods and services covered by the trade mark registration.
Both sides filed detailed evidence in the case, and the EUIPO issued its decision on 18 April 2017.
Observing that the relevant consumer is the Irish average consumer and that the term ‘ACHILL’ refers to Achill Island in County Mayo, Ireland, the EUIPO found as follows.
Regarding the class 29 goods being meat, lamb meat, lamb meat products, the EUIPO observed from the evidence that “Ireland as a country is rife with sheep”. It is known for its sheep and sheep farming. There are sheep all over Ireland, and “sheep farming has taken place on Achill Island for a long time”. When lamb meat is sold to the consumer, the breed is seldom or never mentioned. On the other hand, geographical provenance is often mentioned when choice foods are offered for sale. Geographical provenance of foods has become important for consumers, for instance, consumers know that feed, such as grass and herbs in a specific place eaten by sheep and livestock, affects the taste of meat. Consumers may choose a meat from a certain place because they like that flavour and other qualities of the meat and increasingly geographical provenance is mentioned in sales and marketing. Taking into consideration that the Irish average consumer is aware sheep farming takes place all over Ireland, they would rightly assume it also takes place on Achill Island. Therefore, when viewing the mark ‘ACHILL’ in relation to the class 29 goods, the consumer will immediately understand that the goods are lamb meat from lambs reared on Achill Island, and would understand it as a term indicating the geographical origin of the goods. Therefore, ‘ACHILL’ is descriptive for the class 29 goods.
Regarding the class 43 services, the term ‘ACHILL’ is descriptive as an indication of destination, location and subject matter for holidays, holiday accommodation and holiday information services. It is also descriptive for restaurant and catering services, which go hand-in-hand with accommodation services. Furthermore, food is an important part of holiday experience and tourists will often connect foods with a certain place. However, equestrian holidays are very specific and cater to a limited number of individuals. There was no evidence that Achill Island is known for horse riding holidays and ‘ACHILL’ is not descriptive for these services.
Regarding the class 44 services, there was no evidence that Achill Island is known for such healthcare, health resort or personal care services, or that the consumer might view the term ‘ACHILL’ as an indication of geographical origin for such services. Therefore, ‘ACHILL’ is not descriptive for these services.
The EUIPO went on to find that ‘ACHILL’ is also devoid of distinctive character for the same goods and services for which the mark has been found to be descriptive.
The EUIPO noted that in these proceedings the trade mark owner did not claim nor did it provide any evidence of acquired distinctiveness of the mark ‘ACHILL’.
The EUIPO upheld the application for cancellation in part and declared the trade mark ‘ACHILL’ invalid for “Meat and meat products; lamb meat and lamb meat products; lamb meals and constituents of meals predominantly of lamb” (Class 29) and “Holidays and holiday accommodation, holiday information; restaurant services; catering services” (Class 43). The trade mark will remain registered only for “Equestrian holidays” (Class 43) and “Healthcare services; health resort services; convalescent homes services; saunas, beauty salon services, sanatorium, hairdressing services; massage services; nursing services; baths for hygiene purposes and turkish baths; flower arranging; manicure services; physiotherapy” (Class 44).
The decision is open to appeal to the EUIPO’s Board of Appeal until 19 June 2017, otherwise it becomes final after that date.
Update: The registrant filed a Notice of Appeal to EUIPO against the decision on 15/06/2017.