Background

An entrepreneur and producer of several “Mallorca Artists” had already filed an EU trademark application with the EUIPO in 2002 for the registration of the word trademark MALLE for various goods and services in classes 9, 35, 38 and 41. In 2004, the trademark was subsequently registered and granted protection for CDs, TV shows, parties, music production and the like.

In the following years, the owner of the trademark had taken action by more than 100 preliminary injunction proceedings against third parties allegedly infringing the MALLE trademark - for example, use of the phrase "Malle parties" and the lack of a corresponding license for this term.

However, the last two warnings issued by the entrepreneur backfired. The recipients of the warnings defended themselves and filed an application for cancellation of the trademark with the EUIPO. The grounds for the application were that the trademark had been registered at the time despite the existence of conflicting absolute grounds for refusal - the trademark already had a purely descriptive character and was devoid of any distinctive character at that time, according to the parties' argumentation.

Decision

The Cancellation Division granted the application for cancellation and declared the trademark MALLE invalid on the basis of its descriptive character - the Office refrained from examining whether the trademark was also devoid of the minimum degree of distinctiveness as normally required.

According to Article 7 (1) (c) EUTMR, trademarks which consist exclusively of signs or indications that may serve, in trade, to designate geographical origin are not to be registered. According to the EUIPO, this is the case with the trademark MALLE. The applicant has proven this descriptive character by presenting more than 50 press articles from 1998 to 2002. The press articles showed that the term MALLE had already been used at that time as a synonym for the Balearic island of Mallorca. According to the EUIPO, the goods and services claimed also showed a certain proximity to the tourism for which Mallorca is known in the European Union.

Furthermore, it follows from Article 7 (2) UMV that it is sufficient for the refusal of an EU trademark if the grounds for refusal exist only in a part of the EU (such as Germany). Therefore, it is not detrimental that it might be only the German public that has a corresponding understanding of the term MALLE. Since the Union trademark application MALLE was, at the time of filing, opposed by the absolute ground for refusal in Article 7 (1) (c) UMV, the application for cancellation was granted pursuant to Article 59 (1) (a) UMV. However, that decision is not yet final.

German proceedings and a word of caution

In Germany, there are proceedings pending before the District Court of Düsseldorf re. the cancellation of the German trademark MALLE. Most likely, the argumentation of the applicant will be the same as before the District Court of Düsseldorf. It remains to be seen, however, whether this will convince the court in the national proceedings as it did before the EUIPO. Additionally, the EUIPO decision is not yet final. Therefore, regardless of the EUIPO decision, advertisers should continue to be cautious with the use of the term MALLE - especially in connection with the goods and services claimed  in classes 9, 35 and 38.

Authored by Yvonne Draheim