The word “monaco” designates the origin or geographical destination of the goods and services concerned and is devoid of distinctive character.
In 2010, the government of the Principality of Monaco was granted, by the World Intellectual Property Organisation (WIPO), an international registration covering the territory of the EU. That registration, which was based on the word mark “monaco”, was transferred to the Office for Harmonisation in the Internal Market (OHIM) to be processed.
In 2013, OHIM refused protection of the trade mark in the EU in respect of some of the goods and services applied for (i.e.: magnetic data carriers, paper and cardboard goods not included in other classes, printed matter, photographs, transport, travel arrangement, entertainment, sporting activities and temporary accommodation).
OHIM based its refusal on the descriptive character of the mark, in so far as the word ‘monaco’ designates the territory of the same name and could, therefore, be understood in any of the EU’s official languages as designating the origin or geographical destination of the goods and services concerned. OHIM further considered that the mark at issue was clearly devoid of distinctive character. Les Marques de l’État de Monaco (MEM), a Monegasque public-limited company which succeeded the government of the Principality of Monaco as the proprietor of the trade mark, contests OHIM’s decision before the General Court and seeks the annulment of that decision.
In its Judgment in Case T-197/13, Monaco v OHIM, the General Court (Eight Chamber) dismisses the application and upholds OHIM’s decision.
The General Court points out, first of all, that under EU law any legal entity, including a public law entity, may apply to benefit from the protection of the Community trade mark. This is, of course, true for companies based in the territory of a State which is not a member of the EU, but also for the non-member States themselves, since those States are, within the meaning of EU law, public law entities. As a result, when the Principality of Monaco formulated its request to have the EU designated for the international registration of the trade mark at issue, it placed itself within the scope of application of EU law and, therefore, one of the absolute grounds for refusal could be relied upon against it. In other words, the Principality of Monaco sought to benefit from the application of EU law and, therefore, became subject to its rules, without being able to rely on its entitlement in principle to be the proprietor of the trade mark “monaco”.
Moreover, the General Court observes that the word “monaco” corresponds to the name of a globally-known principality, not least due to the renown of its royal family, its organisation of a Formula 1 Grand Prix and its organisation of a circus festival. Knowledge of the Principality of Monaco is even more established amongst EU citizens, notably on account of its borders with a Member State (France), its proximity to another Member State (Italy) and its use of the same currency as 19 of the 28 Member States, the Euro. There is therefore no doubt that the word “monaco” will evoke, regardless of the linguistic background of the relevant public, the geographic territory of the same name. In addition, the General Court notes that OHIM correctly defined the relevant public (namely citizens of the EU) and correctly attributed to that public, in respect of the goods and services concerned, either an average or high degree of attentiveness.
According to the General Court rulings, OHIM was also correct to find that the word “monaco” could be used, in trade, to designate origin, geographical destination or the place of supply of services, so that the trade mark has, in respect of the goods and services concerned, a descriptive character. Furthermore, as a descriptive mark is necessarily devoid of distinctive character, the General Court holds that the trade mark “monaco” is devoid of distinctive character.
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