The OHIM’s Opposition Division has refused the registration of the Community Trade Mark application “COLOMBUENO” covering ‘services for providing food and drink’ in class 43 due to the conflict with the PGI “Café de Colombia”, as it was alleged by the opponent, the Federación Nacional de Cafeteros de Colombia, represented by the law firm Berenguer & Pomares abogados.
The protection granted to PGIs and PDOs against the use of conflicting signs to distinguish services in the course of trade is set forth in Art. 13(1) of the Regulation (UE) 1151/2012 on quality schemes for agricultural products and foodstuffs. However, in accordance with a practice settled by its Boards of Appeal, the OHIM had been denying said protection when it came to the refusal of new conflicting trade marks; in which case the OHIM used to require that the PGI and the trade mark applied for covered the same type of product, as an additional requirement imposed by Art. 14 of the aforementioned Regulation (UE) 1151/2012.
According to this novel Decision, the reinforced protection granted to PDOs and PGIs pursuant to Art. 13(1) of the Regulation (UE) 1151/2012 is also directly applicable to opposition procedures against the registration of conflictive trade marks, by the remittal of Art. 8(4) CTMR which deals with oppositions based on signs other than trade marks (like PGIs and PDOs). This was the approach held by the Federación Nacional de Cafeteros de Colombia and its law firm Berenguer & Pomares in prior cases in which the OHIM eventually ruled contrary and are, thus, currently pending in the General Court of the European Union.
In the aforementioned Decision, the Opposition Division deems that there exists sufficient link between services for providing food and drink and the good ‘coffee’ so that consumers may expect that in an establishment named “COLOMBUENO” coffee protected under the PGI “Café de Colombia” is served. Furthermore, it has to be highlighted that the Opposition Division considered that the protection granted to the PGI against services is effective not only in cases of direct use of the protected geographical name (Colombia), but also in cases of evocation (COLOMBUENO).
This is a new success for the Designations of Origin in general, whose enhanced protection foreseen in the European Regulations is increasingly recognized by judicial and administrative authorities, in the current case the Offices entrusted with the registration of trade marks.
