Txakoli (chacolí in Spanish) is a slightly sparkling, very dry white wine produced in the Spanish provinces of the Basque Country, Cantabria and Chile. The applicants- three Regulating Councils for Designation of Origin Txakoli, trying to impede other Spanish regions, such as Burgos, from using freely the term to refer to their product as Txakoli wine, applied for registration as a collective Community trademark.
In Judgment T-34/09, the General Court dismissed the appeal against OHIM’s decision refusing registration of the collective word mark ‘TXAKOLI’ for goods and services in Classes 33, 35, 41 and 42.
Firstly, according to Article 66 (2) CTMR “ signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute Community collective marks”.
A little of background on the wine market regulation is needed: as rightly concluded by the Board of Appeal, ‘chacolí ‘ or ‘txakolina’ are protected as “traditional terms” in the meaning of Article 23 Regulation n°753/2002 which protects characteristics of the wine, place of production or its history, and while they might be the equivalent of the applied for CTM ‘Txakoli’, these terms do not constitute a protected designation of origin like ‘Txakoli de Alava’, ‘Txakoli de Bizkaia’ and ‘Txakoli de Getaria’ which consist of the name of a region or a specific geographical place which indicates the origin of the wine, as authorized by Regulation n°1234/2007 establishing a common organization of agricultural market.
The General Court decided, despite the applicant’s arguments that the peculiar spelling of Txakoli which reminds of the Basque country, that the regulations of the wine sector consider the terms ‘txakoli-txakolina-chacoli’ like a characteristic of the wine and not a geographical origin of the goods, thus being descriptive and cannot be registered according to Article 7 (1) (c) CTMR.
The Court confirmed that ‘TXAKOLI’ could not be monopolized and registered as a trademark (individual nor collective) and must be left free for companies which produce this kind of wine and who can or might obtain the right to use such traditional term. The relevant EU consumer will only consider the word as an indication of a specific wine.
The applicants tried to argue that according to Article 24 (5) Regulation n°753/2002, to qualify for a ‘traditional term’, it must be sufficiently distinctive and/or enjoy an established reputation on the Community market, thus TXAKOLI would fulfill the prerequisite for Article 7(1) (b) CTMR. The Court also rejected this claim as irrelevant because Regulations n°753/2002 (wine market) and n°207/2009 (CTMR) fulfill different aims.
Finally, it must be noted that the Applicants submited official statements from the Parliament of the Autonomous Community of the Basque Country and a commission of the Spanish Parliament, which the Court rejected reminding that OHIM and the GC are independent instances from political positions. Further, the refusal to register TXAKOLI as a CTM did not have any repercussion on the exclusive rights of the applicants and their possibility to enforce the use of the words ‘txakoli-txakolina-chacolí’, where complying with the wine sector regulations.