“Café de Colombia” vs “Colombiano Coffee House” and “Colombiano House”

The General Court confirms that the protection of PDO/PGI against registration of conflicting trademarks goes beyond products of the same type.

Subsequent to the recent Decision issued by the OHIM’s Opposition Division, dated February 2, 2015, that rejected registration of the trademark “COLUMBUENO” with regard to “services for providing food and drink” in Class 43, due to the conflict with the earlier PGI “Café de Colombia”, it is now the General Court of the European Union (GCEU) which confirms that the protection of these rights is not only limited to situations where the later trademark relates to a product of its same type.

By means of the Judgments dated September 18, 2015, in Cases T-387/13 and T-359/14, the GCEU annuls two Decisions of the OHIM’s Board of Appeal that, using a practice that now seems to be changing, denied the protection of the PGI “Café de Colombia” against two later trademarks, “COLOMBIANO HOUSE” and “COLOMBIANO COFFEEHOUSE “, which covered “services for providing food and drink” in Class 43.

In both cases –T-387/13 resulting from an opposition proceedings against a trademark application and T-359/14 arising from an invalidity proceedings against a registered trademark– the FEDERACIÓN NACIONAL DE CAFETEROS DE COLOMBIA, represented by Berenguer & Pomares abogados, argued that those trademarks, which include the term “COLOMBIANO” and intended to distinguish “services for providing food and drink”, constitute infringement of the PGI “Café de Colombia” under the protection conferred by art. 13 «Regulation (EC) 510/2006 on the protection of geographical indications and designations of origin for agricultural and food products» (now repealed and replaced by Regulation EU 1151/2012), which covers situations of direct or indirect use, evocation or exploitation of the PGI’s reputation, without the requirement that they are carried out in relation to products of the same type, similar or even comparable, to those protected by the PGI. Therefore, and pursuant to art. 8.4 of the Regulation on the Community Trade mark (applicable to oppositions based on PGI or PDO), refusal and invalidity of either trademark were requested.

However, in both procedures, the OHIM’s Board of Appeal concluded that, where the earlier right is a PGI or PDO, the analysis of the “Community legislation”, to which Article 8.4 of the Regulation on the Community Trade mark refers to, should begin with art. 14 of Regulation (EC) 510/2006, which requires indeed that both rights “relate to a product of the same type” in order for the later trademark to be refused or invalidated. Since this very requirement was not met in these two cases, the actions of the FEDERACIÓN NACIONAL DE CAFETEROS DE COLOMBIA were rejected by the OHIM.

After the appeals filed before the GCEU, this Court has upheld the thesis maintained by the FEDERACIÓN NACIONAL DE CAFETEROS DE COLOMBIA and Berenguer & Pomares abogados. In essence, the Court considers that where the opposition or invalidity action is filed upon the request of the party (based on Art. 8.4 of the Regulation on the Community Trade mark), the PDO / PGI enjoy the full scope of protection conferred in art. 13 of Regulation (EC) 510/2006 (now Regulation EU 1151/2012), and so leaving the application of art. 14, if any, for ex officio refusals of trademarks.

Hence, the Judgments of the GCEU annulled the previous Decisions of the Board of Appeal, which is now compelled to issue new Decisions applying the criterion imposed by the Court.