The collective trademark "Emmentaler" is descriptive for cheeses according to the General Court of the European Union.

Collective trademarks are an exception to the absolute ground for refusal in Article 7(1)(c) of Regulation No 2017/1001 on the European Union Trade Mark (EUTMR), which provides that: "The following shall not be registered:

(c) 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;'".

In this sense, exceptionally, signs or indications that may serve to indicate the geographical origin of the goods or services may be registered as collective trademarks (see art. 74.2 EUTR).

In this particular case, Emmentaler Switzerland applied for the collective trademark 'EMMENTALER' for class 29 of the Nice Classification with the following description: 'Cheeses with the protected designation of origin "emmentaler"'.

The European Union Intellectual Property Office (EUIPO) refused that application on the basis of Article 7(1)(b) and (c) EUTMR. This decision was appealed by the applicant and the Board of Appeal of the EUIPO dismissed the appeal on the grounds that the mark was descriptive under Art. 7(1)(c) EUTMR (reproduced above).

Emmentaler Switzerland applied to the General Court (GC or Court) to annul the contested decision of the Board of Appeal, to grant the collective trademark applied for and to order EUIPO to pay the costs.

However, the GC confirmed in its judgment of 24 May 2023 that the collective trademark 'EMMENTALER' is indeed descriptive for cheeses with the protected designation of origin 'emmentaler', pursuant to Art. 7(1)(c) EUTMR reproduced above, and dismissed the appeal, ordering the applicant to pay the costs.

First of all, the GC recalls that, according to settled case-law, a trade mark which is descriptive of characteristics of the goods or services within the meaning of Art. 7(1)(c) EUTMR is, on that account, necessarily devoid of distinctive character in relation to those goods or services ex Art. 7(1)(b) EUTMR.

Furthermore, these signs are considered to be inappropriate for performing the essential and principal function of a trade mark, which is to identify the commercial origin of the designated goods or service.

The GC finds that this ground for refusal applies even if it is descriptive in only one part of the European Union, i.e. in only one Member State.

There must be a sufficiently direct and specific relationship between the sign applied for and the goods and services designated to enable the relevant public to identify immediately, without further thought, a description of the goods and services in question or of one of their characteristics.

According to the GC, the descriptiveness of a sign must be assessed, on the one hand, in relation to the goods or services concerned and, on the other hand, in relation to the understanding of the sign by the relevant public. In this particular case, the Court considers that these are goods intended for all consumers, and therefore the relevant public is the public at large.

It is argued by the applicant that, despite being a cheese produced in Switzerland, a significant quantity of the product was produced and marketed in Germany, without any mention of the indication of the place of manufacture (when it was compulsory to indicate the country of designation under the Agreement between Switzerland and Germany on the protection of indications of provenance and other geographical designations), which suggests that the general German public designated a characteristic of that product, this being an indication that the designation "emmentaler" had become generic.

The Court states that the fact that several economic operators produce and market goods in a Member State under a given sign, without the sign referring to a commercial or geographical origin of those goods, may suggest that the relevant public perceives that sign as designating a characteristic of those goods and, therefore, as descriptive.

Consequently, as the sign "EMMENTALER" applied for does not refer to a specific geographical origin, but to a type or kind of cheese, the GC concludes that the sign cannot be registered as a collective trademark, as only signs which are considered to be an indication of the geographical origin of those goods or services can be registered.