The matter at hand
Ms Benavente Cárdaba and Mr Moreno Benavente are the proprietors of the Spanish trade mark La Milla de Oro (meaning “The Golden Mile”) for wines. They brought an action against Abadía Retuerta complaining that its use of the sign El Pago de la Milla de Oro, also for wines, gave rise to a likelihood of confusion.
Abadía Retuerta contested the claim and lodged a counterclaim seeking a declaration of invalidity in relation to the trade mark La Milla de Oro. It submitted, inter alia, that the sign la Milla de Oro is a nickname commonly used in the wine-growing sector for a very specific geographical area in which both the trade mark proprietors and Abadía Retuerta operate and that, on that basis, it is an indication of geographical origin.
In the appeal lodged against this decision, Ms Benavente Cárdaba and Mr Moreno Benavente argued that the sign la Milla de Oro is not an indication of geographical origin, but an indication used for goods of high (gold) quality produced in a certain region. To illustrate their point, they submitted that in Spain, the term ‘la Milla de oro de la Rioja’ is used to identify the best wines in the region Rioja and the term ‘la Milla de oro de la Ribera del Duero’ to identify the best wines in that region. They further submitted that the sign is also used to designate a stretch of a street in Madrid famous for the number of local and international banks and financial company's headquarters and buildings, and another street in which the most important art museums in the city of Madrid are situated.
The court of appeal referred the matter to the ECJ, asking whether a sign such as ‘la Milla de Oro’, referring to the characteristic of a product or service which is that it can be found in abundance in a single place with a high degree of value and quality, may be considered as an indication of geographical origin where the goods or services concerned are concentrated in a specific physical area. Furthermore, the court asked whether the sign la Milla de Oro might be invalid due to its descriptive nature, since it refers to the characteristic of a product or service.
The judgment of the ECJ
With reference to Windsurfing Chiemsee (C-108/97), the ECJ recalls that the Trade Mark Directive “prohibits the registration of geographical names as trade marks when the names designate places which are, in the mind of the relevant class of persons, currently associated with the category of goods concerned, or when it is reasonable to assume that such an association may be established in the future” (paragraph 16).
The ECJ rules that this is not the case here, as the sign LA MILLA DE ORO is not sufficient, by itself, to designate a specific and determined geographical place to which the origin of the wines in question could relate (paragraph 17). Consequently, it must be accompanied by a name designating a given geographical place so that the geographical origin of the goods or services concerned may be identified (paragraph 19). It follows that there is no connection between the product concerned, namely wine, and the geographical origin attributed to the sign LA MILLA DE ORO and that therefore the sign cannot constitute an indication of geographical origin.
With regard to the question of descriptiveness, the ECJ simply repeats the criteria set in settled case-law (KPN, C-363/99 and Linde, C-53/01 to C-55/01), and rules that “it will be for the referring court to ascertain, during the assessment in concreto of all the relevant facts and circumstances, whether the sign ‘la Milla de Oro’ can be perceived by the relevant public as being descriptive of a characteristic of a product” (paragraph 25). The ECJ, however, does help the referring court, by saying that “a sign such as ‘la Milla de Oro’, referring to the characteristic of a product or service which is that such a product or service can be found in abundance in a single place with a high degree of value, is unlikely to have characteristics the use of which as a trade mark would constitute a ground for invalidity within the meaning of that provision” (paragraph 31).
The ECJ further points out that, if the referring court indeed finds that the sign is not descriptive, it must still be determined whether it has distinctive character in accordance with Article 3(1)(b) of the Trade Mark Directive. In that regard, the ECJ notes, with reference to its decision in Delphi Technologies (C-448/13 P), that “[t]he laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. (…) It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood, perhaps even primarily understood, as a promotional formula has no bearing on its distinctive character” (paragraph 29).