On 20 January 2014, the fifth OHIM Board of Appeal issued a decision confirming the Examiner’s previous decision to partially reject the CTM application for PARMATUTTO (word) in relation to certain meat products but not others, holding, amongst others, “meat extracts; meat gelatine; salted minced bovine meat; meat steaks; bullock meat; canned bullock meat; minced meat; meat for sausages; meat hamburgers; meat juice, meat substitutes” NOT comparable to the products covered by the PROSCIUTTO DI PARMA PDO and COPPA DI PARMA PGI.

Background

In December 2012, the Applicant, a Neapolitan, filed CTM application No 11147113 for the word mark PARMATUTTO in class 29, amongst others for:

“poultry; meat; preserved meat; pork meat; meat extracts; meat gelatine; salted minced bovine meat;  sundried bovine meat; smoked meat; sliced bovine meat; meat steaks; preserved pork meat; bullock meat; canned bullock meat; turkey; veal; dried meat; fresh meat; canned meat; minced meat; meat for sausages; fish and game; dry meat; frozen meat; chili con carne; meat hamburgers; meat pasta; products containing meat in the shape of a hamburger; meals on the basis of meat; products on the basis of frozen meat; products on the basis of processed meat; shepherd’s pie; meals on the basis of cooked meat; cooked ready-to-eat meals only or mainly containing meat; ready-to-eat meals containing meat; meat juice, meat substitutes; quenelle; scotch eggs; meals on the basis of fish, prepared and ready-to-eat meals containing fish, fish, frozen fish, preserved fish, canned fish; milk beverages; milk, whey”. 

The OHIM Examiner raised an absolute ground for refusal under Article 7 (1) (k) CTM Regulation, holding that the application should be partially rejected, in particular for

“meat; preserved meat; pork meat; canned meat; sundried bovine meat; smoked meat; sliced bovine meat; preserved pork meat; dried meat; fresh meat; dry meat; frozen meat; meals on the basis of meat; meals on the basis of cooked meat; cooked ready-to-eat meals only or mainly containing meat; ready-to-eat meals containing meat; products containing meat in the shape of a hamburger; products on the basis of frozen meat; products on the basis of processed meat; quenelle”,  

wherever the latter products may originate from, since the application contains the term PARMA, a significant element of the registered Protected Designation of Origin (PDO) PROSCIUTTO DI PARMA (raw ham) as well as of the registered Protected Geographical Indication (PGI) COPPA DI PARMA (salami made with pork neck: get hungry here and here).  

In accordance with OHIM practice, the applicant was given the possibility to exclude these products so as to allow the registration of the mark. 

Nevertheless, the applicant refused, arguing that he had registered and used the mark in Italy since as far back as 1984, that his company was established in the city of Parma and that the mark was used for cooked ham only. Also, he cited the third party CTM PARMACOTTO that had been accepted by the OHIM for meat products with the exception of raw ham, and claimed that he had therefore been given unequal treatment. 

 Decision

On 30 July 2013, the Office fully confirmed the partial rejection of the application. In its decision it added that the fact that the applicant was already using/had registered the mark in question was not relevant, nor was the fact that his company was established in Parma.

The OHIM decision further reiterated the fact that Article 13 (1) of the PDO/PGI Regulation (Regulation No 1151/2012- of which Article 7(1)(k) applies) protects registered PDOs/PGIs not only against commercial use of identical products but also that of comparable products.

As a consequence, according to the Office (in this decision), the products covered by the PDO/PGI in question (raw ham and salami) are comparable to “meat products, preserved meat, dry meat, frozen meat, pork meat, sundried bovine meat, sliced bovine meat” but not comparable to milk products (or fish products) nor, even more surprisingly, to certain other meat products such as “salted minced bovine meat, minced meat, bullock meat, canned bullock meat, meat juice, meat extracts, meat gelatine, meat steaks, veal, meat hamburgers, meat substitutes and meat for sausages”.

Also, the Office stated that the legitimacy of an OHIM decision has to be assessed only on the basis of the CTMR– as interpreted by the relevant case law - and not on the basis of OHIM precedents.

 Decision in Appeal

The applicant filed an appeal, in substance repeating the same arguments, which was rejected by the 5^th Board of Appeal.

In its reasoning, the Board’s decision agreed in toto with the prior Examiner’s decision, including where the products that were considered “comparable” were concerned. The Board reiterated that protected names are protected also in respect of products not covered by the registration where those products are comparable to the products registered under that name or where using the name exploits the reputation of the protected name, including when those products are used as an ingredient

With reference to:

“meat; preserved meat; pork meat; canned meat; smoked meat; preserved pork meat; dried meat; fresh meat; dry meat; frozen meat; meals on the basis of meat; meals on the basis of cooked meat; cooked ready-to-eat meals only or mainly containing meat; ready-to-eat meals containing meat; products containing meat in the shape of a hamburger; quenelle”.

the Board held that these products could refer to (or contain, as a main ingredient) ham (“prosciutto”) or coppa, i.e. the products protected by the registered PDO and PGI in question,

while with reference to:

“sundried bovine meat, sliced bovine meat”

the Board stated that these were “obviously comparable to Parma ham and Parma coppa” and, in addition, that these were “products that would exploit the reputation of the PROSCIUTTO DI PARMA PDO and the COPPA DI PARMA PGI if bearing the PARMA element and thus, for that matter, being deceptive for consumers”. 

 Comment

This decision touches upon several sore points, highlighting, amongst others, the unpredictability of the OHIM’s interpretation of Article 7(1) (k) CTMR over the past years of the concept of “comparable products”.

Indeed, amongst others in the RONCARIFORT case (No 609C of 6/10/2004), the OHIM cancellation Division concluded that the concept of comparable products covered all the products within the foodstuffs and agricultural sector (holding cheese comparable to products such as “meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; compote; eggs, milk and milk products; edible oils and fats” in class 29, “agricultural, horticultural and forestry products and grains (not included in other classes); living animals; fresh fruits and vegetables; seeds, natural plants and flowers; substances for the animals feeding; malt” in class 31 and “storing and delivery services of food products and beverages” in class 39).

Also, according to the above OHIM Board of Appeal decision, products such as “meat extracts; meat gelatine; salted minced bovine meat; meat steaks; bullock meat; turkey; veal; minced meat; meat for sausages; meat substitutes and meat hamburgers” are NOT comparable to the products covered by the PROSCIUTTO DI PARMA PDO and COPPA DI PARMA PGI, while e.g. “sliced bovine meat; sundried bovine meat and products containing meat in the shape of a hamburger” are!  

 Apart from being a bit puzzling, doubts automatically arise as to whether this is compatible with the Cognac II decision of the ECJ , according to which products can be reasonably held comparable - regardless of their various categories - if:

• they have common objective characteristics
• they are consumed, from the point of view of the relevant public, on occasions which are largely identical
• they are frequently distributed through the same channels and subject to similar marketing rules (par. 54 of the decision).

In   In any event, important changes to the Manual are on their way, as the Office is in the process of completely re-drafting the parts dedicated to the implementation of Articles 7.1 (j) and 7.1 (k) CTMR, in the part of the Guidelines dedicated to Absolute Grounds for Refusal. We will keep a close eye on the OHIM Manual’s progress.