The Principality is not allowed to register the trademark “Monaco”: according to the GC it lacks distinctive character

The General Court of the European Union (“GC”) recently rejected the complaint filed by Marques de l’État de Monaco (“MEM”) – a Monegasque company connected with the Principality’s Government – against the decision of the Office for the Harmonization in the Internal Market (“OHIM”) not to grant the registration as  a Community trademark of the sign “Monaco” for some of the goods and services indicated in the relevant application (magnetic recording supports, paper products, cardboard, not included in other classes; prints; photographs; transport; travel arrangements; entertainment; sporting activities; temporary housing). This decision (as well as the one under appeal) is mainly grounded on the purely descriptive character of the sign “Monaco”, which was in any case deemed to lack distinctive character: this sign, in fact, the decision notes, only indicates a specific geographical origin and is not capable of identifying the commercial origin of goods.

Here are the facts in more detail. In 2010, the Government of Monaco obtained from the World Intellectual Property Organization (WIPO) the registration of the sign “Monaco” as an international trademark, also designating it for registration within the European Union. Therefore, the application for registration was passed to the OHIM, which, however, partially refused to grant the relevant CTM, pointing out that the sign had a descriptive nature and lacked distinctive character for the abovementioned goods and services under Article 7, paragraph 1, letters b) and c) of the Regulation (EU) no. 207/2009. Then MEM (meanwhile having succeeded to the Principality in the ownership of the trademark) filed a complaint against the OHIM’s decision before the OHIM’s IV Board of Appeal, which rejected the complaint confirming the grounds explained in the refusal of registration and noting that there was no particular legitimacy for the Principality’s Government to hold the trademark at issue.

Therefore, the applicant requested the GC to annul the OHIM’s decision. By the judgment at issue, the Court, refuting MEM’s defences, rejected the complaint.

First, the Court pointed out that in respect of the granting of the CTM at issue the Principality was a normal legal entity, it being irrelevant that it was a third country outside the European Union. Therefore, contrary to what the Monaco Government had claimed, there was no particular legitimacy of the latter to hold the trademark, as already affirmed by the OHIM Board of Appeal.

Then, as concerns MEM’s position that the sign “Monaco” was not descriptive, the Judges noted that the registration of geographical names is not allowed when the names indicate places already known for the category of goods or services in question and therefore have, in the eyes of the relevant public, a connection with those goods or services. In particular, the Court found that it is “undisputed that the word “Monaco” matches the name of a principality known worldwide” and that it “enjoys an even higher reputation among the citizens of the European Union“; therefore, “there is no doubt that it will evoke, regardless of the language of the relevant public, the geographical territory with the same name“. In this context, the Court continued, “the Board of Appeal satisfactorily demonstrated, for each of the goods and services at issue, a sufficiently direct and specific connection between them and the trademark at issue to consider that the term “monaco” could serve in the marketplace to designate the geographical origin or destination of goods or the place of supply of services and that, consequently, the abovementioned trademark had a descriptive nature for the goods and services at issue”. On this basis, the relevant compliant ground was rejected.

Finally, with regard to the compliant ground based on the asserted existence of distinctive character denied by the OHIM, the Court first established that the ascertained descriptive nature of the trademark itself implies the absence of a distinctive character for goods or services required. In addition, the Judges added that, even if the sign was not descriptive, it would be not distinctive anyway because it “would essentially be perceived by the relevant consumer as a vehicle of information rather than as an indication of the commercial origin of the goods or services at issue”.