“Emmentaler” cannot be protected as an EUTM

On 24 May 2023, the General Court held in case T-2/21 that the term “Emmentaler” cannot be protected as an EU trade mark because it has descriptive character in accordance with Article 7 (1)(c) of Regulation 2017/1001 (EUTMR – EU Trade Mark Regulations).

The beginning of this story dates to October 4, 2017, when Emmentaler Switzerland obtained the international registration of the word sign “Emmentaler” from the International Bureau of the WIPO for cheeses with a protected designation of origin Emmentaler (Class 29) – this registration designated the EU and was therefore notified to EUIPO. However, on 9 September 2019, the EUIPO examiner denied the registration application on the basis of Article 7(1)(b) and (c) in relation to Article 7(2) of EUTMR. On October 25, 2019, Emmentaler lodged an appeal against the examiner’s decision and the Board of Appeal dismissed it on the basis of Article 7(1)(c) on the ground that the trade mark applied for was descriptive. Emmentaler Switzerland appealed the decision of the Board of Appeal before the General Court, which on May 24 dismissed it based on the following arguments:

In accordance with Article 7(1)(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 services” are not to be registered.

For a sign to fall within the scope of the prohibition set out in Article 7(1)(c) of the EUTMR, it must suggest a sufficient direct and concrete link to the goods or services in question to enable the public concerned immediately to perceive a description of the category of goods and services in question or one of their characteristics.

The General Court brought up the arguments put forward by the Board of Appeal to substantiate that the German public immediately perceived the sign “Emmentaler” as a sign designating a type of hard cheese with holes. In particular, the Board of Appeal referred to the definition of the term “emmentaler” in the Duden dictionary; data regarding the production of emmentaler; the German cheese regulation; the EU position during the negotiation of the Agreement between Switzerland and the EU; the general standard for emmental drawn up by the Codex Alimentarius Commission and the judgement in Case C-448/98.

Thus, the General Court confirmed the descriptive character of the trade mark within the meaning of Article 7(1)(c) and recalled that it is sufficient that such a ground for refusal exists in one part of the EU -that can be one Member State, Germany in this case- for the prohibition to be applied, as set out in paragraph 2 of that same article.

The General Court also denied the protection of the trade mark applied for as a collective mark: indeed, Emmentaler had argued that it could benefit from the derogation of article 74(2) EUTMR, according to which a collective mark can be filed even if it is descriptive when it comes to designating the origin of goods. The Court recalled that this exception must be interpreted strictly, limiting its application to signs which are regarded as an indication of the geographical origin of those goods. The term “Emmentaler” was descriptive of a type of cheese for the German public concerned and was not perceived as an indication of the geographical origin of that cheese. Therefore, “Emmentaler” could not be protected either as a collective mark.

Cheese has become a recurring issue in the courts of the European Union as we have seen on previous occasions such as Case C-614/17, where the CJEU ruled in favour of the Spanish Queso Manchego producers. As far as the Swiss cheese company is concerned, they can only appeal on points of law to the Court of Justice of the European Union.