Collective trademarks including protected designations of origin: the case of "Chianti Gran Selezione"

On 26 July 2024, the Second Board of Appeal of the EUIPO rejected the appeal filed by Consorzio Vino Chianti (the “Consortium”) against the refusal to register EU collective trademark no. 018441418

with a claim of the red colour in class 33 of the Nice Classification for “wine compliant with the specifications of the Protected and Guaranteed Designation of Origin Chianti”.

The application, submitted on 30 March 2021, had initially been refused by the EUIPO for lack of distinctiveness pursuant to Article 7(1)(b) EUTMR and Article 76(1) EUTMR. According to the examiner, the relevant public would perceive the sign as a mere indication of the quality and origin of the wine rather than identifying the commercial origin of the products, which is the essential function of a trademark.

In response to the refusal, the Consortium filed an appeal on 25 August 25 2022, arguing that the trademark was distinctive and, in particular, that i) the protected designation of origin “Chianti” would be distinctive of specific products and capable of indicating the geographical origin of the wineries associated with the Consortium; ii) the term “Gran Selezione” should not be considered a mere laudatory adjective but a qualitative specification recognised by the “Chianti” designation of origin production specification; iii) the graphical elements and the red colour used would grant particular distinctiveness to the sign.

The Board of Appeal rejected these arguments, upholding the decision of refusal for lack of distinctiveness. In particular, the Board highlighted that i) the term “Chianti” can also be used by any operator who is not a member of the Consortium, provided that the wine is marketed in compliance with the corresponding product specification; ii) the wording “Gran Selezione” has only a laudatory connotation and is not capable of clearly indicating a specific commercial origin; iii) the typographic and the claimed red colour have a negligible impact on the overall impression created by the sign.

In reaching this conclusion, the Board recalled that the essential function of a collective trademark is to distinguish the goods and services of the members of the association owning the mark from those of other companies not belonging to the association. It also emphasised that even collective trademarks that may serve to designate geographical origin and are registrable under Article 74(2) EUTMR must still possess an inherent distinctive character. In the present case, the inclusion of the protected designation of origin “Chianti” in the collective trademark was not considered sufficient to grant such distinctive character, as any company complying with the product specification can use the designation.

This decision represents an interesting analysis of collective trademarks that include designations of origin, as it underlines how the distinctiveness of the trademark must always be carefully evaluated to appreciate its essential function of identifying commercial origin.