Catchy title I hear you say, well yes, protected geographical indications are catchy, so catchy that they can be a complete block to your trade mark application, even if the mark you’re trying to register isn’t identical.
This is what happened to the applicants for the EU trade mark TOSCORO. They applied for this mark in relation to olive oil (and olive paste) and, although it was registered initially, it was later found to be invalid after an application from the Consortium for the protection of Tuscan Extra Virgin Olive Oil IGP (admittedly quite a mouthful, let’s just call them the “Consortium” for now).
The Consortium argued that the word ‘Toscano’, which is a region of Tuscany in Italy, was a protected geographical indication in the EU (other examples are Melton Mobray pork pies, Champagne and Gorgonzola). When this was found to be true, the Court examined whether the application for TOSCORO was sufficiently similar to the protected geographical indication ‘Toscano’. On an assessment of the visual and phonetic similarities (i.e. the words look and sound the same), the Court found that they were too close and that TOSCORO improperly evoked the word ‘Toscano’ in the minds of the relevant consumers. On that basis, TOSCORO was held to be invalid in relation to olive oil and olive paste.
So how can this be avoided? Well, if you talk to us before making a new trade mark application we can advise you on your chances of success and, crucially, whether any issues such as protected geographical indications are likely to be raised. We can then assist you with the full application process, from examination to registration, in order to ensure that your valuable brand name is properly protected.
If you would like to talk about trade mark applications in greater with one of expert solicitors, please call us on +44 (0)20 7288 6003 or email INFO.
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