For trade marks that can serve as a geographical indication, a special rule applies: they can be registered as a collective mark (Art. 29(3) TMD, Art. 74(2) EUTMR and Section 99 MarkenG).^[1]
However, the public does not understand the designation ‘Original Eau de Cologne’ as a geographical indication, but as a product designation, so that the sign lacks distinctiveness.^[2] The situation is similar with the indication ‘la Milla de Oro’, which in Spanish refers to products of special quality from different places and cannot designate a specific place without further specification.^[3]
A special ground for refusal for geographical indications in relation to wines and spirits is also contained in Article 7(1)(j) EUTMR and Section 8(2)(10) MarkenG.^[4] According to this, trade marks which contain or consist of a geographical indication identifying wines or spirits are excluded from registration if the trade mark is applied for in relation to wines or spirits of different origin. This ground for refusal should be overcome by respectively limiting the list of goods^[5]. A further specific ground for refusal in connection with designations of origin or geographical indications under Regulation (EU) 1151/2012 on quality schemes for agricultural products and foodstuffs^[6] is contained in Article 7 I lit. k EUTMR, which ultimately prohibits those trade marks that would not be allowed to be used anyway under that regulation.^[7] Due to the direct applicability of the regulation, this ground for refusal also applies to national trade mark law and thus applies in Germany and Austria.
Similar issues to geographical indications are raised by other indications of production or sales locations. In the case of service marks, it is more likely that a descriptive content will be affirmed here because the place of performance of a service is usually more important than for goods, which can, after all, be transported from one place to another. However, the case law is inconsistent.
For example, the BGH held that the designation ‘HOUSE OF BLUES’ was not descriptive for sound recordings.^[8] In contrast, the GC found that the application for registration of ‘PRANAHAUS’ was descriptive for various goods such as sound recordings and printed matter and for retail services in view of the well-known meaning of the Indian word ‘prana’ i. in the sense of ‘life, life energy’;^[9] it would probably have been more appropriate to affirm a descriptiveness for retail services, but not for sound recordings and printed matter. In any case, it does not change the fact that a trade mark is not protectable if it is also part of a company name.^[10]