When choosing a trademark to identify ourselves with in the market and differentiate ourselves from our competitors, it is not enough to choose an attractive, easily retained sign with which we can be quickly recognised and associated. This sign cannot reproduce, nor be similar to, other brands in the sector. Our Courts have developed extensive and detailed jurisprudence clarifying the limit and the borderline between mere similarity and that which, because of its magnitude, is likely to mislead or confuse the consumer and therefore to prevent the use and registration of the new mark.
But what happens when the conflict is generated between a trademark and a Designation of Origin? Do the same criteria outlined for conflicts between trademarks apply or is the assessment carried out with other parameters? When can a Designation of Origin hinder the registration of a trademark?
European Regulations on designations of origin establish a wide range of protection that aims, on the one hand, at the use, usurpation and evocation of the protected designation and, more generally, at any parasitic practice that seeks to take advantage of the reputation of the said designation.
Such protection constitutes recognition of the existence of certain products which have characteristics of their own which give them a superior quality and which are essentially attributable to the place from which they come, either because of their particular natural conditions or because of the use of certain traditional production or processing techniques.
Well, when a trademark clashes with a protected Designation of Origin, which is also an intellectual property right, it will not only give rise to an objection by the Trademark Office, but under current regulations it can also be opposed by the Regulatory Council, as the management body of the Designation of Origin.
In the area of application, the opposition may be upheld when the trademark is applied for in respect of products that are identical or similar to those protected by the Designation of Origin (comparable products) but such products do not comply with the specifications of the Designation of Origin.
In addition, the Designation of Origin shall prevent the application for a trademark if it is identical to, or includes, the protected designation, or if it is formed by a name or even by a graphic or figurative element which in some way evokes the protected designation, or the geographical area to which it is linked, even if these figurative signs are used by producers in the same region [1].
The raison d’être of such protection is to prevent abusive use of designations of origin and to safeguard not only the interests of purchasers but also the benefit of producers who have endeavoured to guarantee the expected quality of products legally bearing such indications.
In view of the above, before initiating the use and registration procedures of the chosen sign, it is highly advisable to carry out a feasibility study that analyses possible conflicts derived from the existence of previous distinctive signs, as well as the possible incursion into absolute prohibitions of registration.
[1] STS 2464/2019 dated 18/07/2019 – ST CJEU 2/05/2019 on PDO “Queso Manchego”
Article by Cristina Margalef.
