- October 1, 2019
- Posted by: Hidde Koenraad
- Category: All posts
Column Hidde Koenraad: What’s in a name?
It is quite common for breeders to choose a person’s first name as a variety denomination or trademark for their new varieties. However, this practice can lead to conflict as it is often the case that a name has been registered already.
In a recent matter, that reached the European General Court of Justice (decision of 18 June 2019, Case T-569/8), the question was whether a conflict with an older variety denomination could be overcome by including the company name as part of the trademark application.
On 26 September 2016, the company Kordes sought to register the EU-mark KORDES’ ROSE MONIQUE for roses. However, the examiner at the EUIPO refused the application on the basis that the name would correspond to the already existing Monique rose variety, which enjoyed plant variety protection in the Netherlands between 2001 and 2005.
Based on EU law, the registration of a trademark is to be refused in respect of signs that consist of, or reproduce in their essential elements, a registered earlier plant variety denomination for the same or closely related varieties.
Kordes appealed by arguing that the essential component of its trademark was not ‘Monique’ but ‘Kordes’. Besides, Kordes argued that the ‘Monique’ component is the variety denomination and therefore a component that is unimportant for the qualification of the overall designation as an indication of origin.
The Board of Appeal (BoA) did not agree and ruled that the general public will perceive the ‘Monique’ element as an essential element of the trademark as a whole and that only specialist consumers (such as breeders, growers and retailers) may recognise ‘Monique’ as a variety denomination.
Kordes appealed again with success. The General Court agreed with Kordes that the element “Kordes’ is the only distinctive element of the mark applied for, as it makes it possible to deter mine its commercial origin. Furthermore, the apostrophe after ‘Kordes’ indicates that the rose with the denomination Monique is a variety marketed by various undertakings but, in the present case, originating from the Kordes company. According to the court the word element ‘rose’ added to the element Kordes is merely descriptive of the goods in question and the variety denomination Monique, in turn, is a generic denomination, which may be freely used by other breeders.
By adding its company name, in the end, Kordes thus succeeded inclaiming its own ‘Monique’ as part of its trademark. However, the EUIPO may still appeal against this latest decision.