Heartfulness and Torta del Casar in trade mark news

Good morning everyone. For this week’s IP news:

“Heartfulness” for meditation cannot be registered as a TM

In April 2018, Sahaj Marg Spirituality Foundation obtained an international trade mark registration designating the EU for “Heartfulness” in different classes. However, a year later, the EUIPO examiner refused the application for extension to the EU territory, basing its decision on Article 7(1)(b) – (c) and (2) of the EU trademark regulation. The applicant appealed the decision, and in November 2019, the board of appeal dismissed the appeal and found that the word “heartfulness” described a particular relaxation and meditation technique and informed the consumer, directly and without the need for further reflection, that the goods and services in question concerned that technique.

The relationship between the applicant’s mark and the subject matter are therefore sufficiently direct to make the word mark descriptive of those goods and services.

This decision was then appealed before the EU General Court.

The applicant alleged that the board had failed to take into account the fact that the word “heartfulness” was created and published by the applicant itself in order to designate a particular relaxation and meditation technique and that, therefore, consumers would identify the applicant with it.

The General Court established that, for a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or one of their characterics.

According to the General Court, the fact that the mark applied for was created by the applicant to designate a particular meditation or relaxation method could not mean that the mark should automatically benefit from registration as an EU trade mark. In order to benefit from such a registration, the mark has to enable the relevant public to immediately perceive it as an indication of the goods or services offered by the applicant and distinguish them from the same goods and services that have a different commercial origin.

Since the applicant confirmed that the word “heartfulness” actually refers to a particular relaxation and meditation technique and is not an indicator of the goods and services offered by the applicant, the General Court considered that the board had been correct when refusing registration of the applicant’s mark, pursuant to Article 7(1)(c) EUTMR.

Torta del Casar and the use of “torta”

The EUIPO initially allowed the registration of the trademark “Queso y Torta de la Serena”, considering, on the moment, that the term “torta” only refers to a round and flat shape of a cheese.

However, the EUIPO, after appeals and a resolution from the EU General Court,  later established that the word “torta” in relation with cheese, is actually exclusive for Torta del Casar, therefore acknowledging the argument of the Regulating Authority for this type of Cheese.

Indeed in relation to cheese, “torta” is actually not a generic term, but a specific term that refers to the peculiar shape of this cheese originating from the region of El Casar (I strongly encourage you to try this cheese with apple or pears, or alone). Hence, based on Article 8(6) EUTMR, protected designations of origin and protected geographical indications applied for prior to the date of application of the EUTM (or the date of priority claimed, if applicable) can be invoked as the basis for oppositions.

After this one year-long battle, no one will be able to register the term “torta” in relation to cheese as a trademark before the EUIPO.

This is all for today. We will see you on Thursday for our monthly blogpost!