On 2 December 2013, the first OHIM Board of Appeal issued a decision confirming the Examiner’s previous decision to refuse the registration for VANA TALLINN AUTHENTIC ESTONIAN LIQUEUR (figurative) for “liqueurs, liqueur-based cocktails and mixed drinks” on the basis of the prior Protected Geographical Indication (“PGI”) ESTONIAN VODKA.

Background

In December 2010, the Applicant filed an International Registration (“IR”) designating amongst others the EU, for the figurative mark VANA TALLINN AUTHENTIC ESTONIAN LIQUEUR for “liqueurs; liqueur-based cocktails and mixed drinks” in class 33.

The OHIM Examiner issued a provisional refusal an absolute ground for refusal under Article 7 (1) (j) CTM Regulation, as the application contained a significant part of the PGI ESTONIAN VODKA for vodka. To overcome the refusal, the Examiner suggested a limitation of the goods so as to only cover “liqueurs, liqueur-based cocktails and mixed drinks, but not including any spirit drinks other than those which comply with the conditions of the protected geographical indication ESTONIAN VODKA“.

Since the applicant disagreed with the limitation, the Examiner rejected the application, holding amongst others that:

- “OHIM is obliged to apply the CTMR provision in a way which is consistent with the specific EU regulations and international agreements governing PGIs and PDOs and, insofar as possible, to directly apply the relevant provisions of the specific PGI/PDO regulations taking into account the principle ‘lex specialis derogat legi generali’. These regulations prohibit the registration of trade marks which conflict with the PGIs/PDOs protected under the regulations in question”;

- “the fact that the element ‘ESTONIAN’ describes a particular country and geographical area and that it is therefore endowed with a greater identifying force than the second element, ‘VODKA’, which simply describes the nature of the goods. The sign applied for contains the indication ‘ESTONIAN LIQUEUR’ which is evocative of the PGI ‘ESTONIAN VODKA’. Moreover, the indications coincide in their first element and have a similar structure”;

- the goods covered by the application are to be considered comparable (in line with the ECJ “Cognac II” decision) to the spirit drink (vodka) registered under the PGI.

Decision in Appeal

The IR holder filed an 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. No further action was brought before the Court of Justice so that the decision has become final.