Friday, January 16, 2015

Monaco: No, You Can't Trademark a Country Name

By Zak Muscovitch.

The General Court of the European Union issued a judgment dismissing the Principality Of Monaco's application for EU protection of its "MONACO" trademark.

In 2010, the government of the Principality of Monaco was granted, by the World Intellectual
Property Organisation (WIPO), an international registration covering the territory of the EU. That
registration, which was based on the word mark, MONACO, was transferred to the Office for
Harmonisation in the Internal Market (OHIM) to be processed.

In 2013, OHIM refused protection of the trade mark in the EU in respect of some of the goods and
services applied for. OHIM based its refusal on the descriptive character of the mark, in so far as
the word ‘monaco’ designated the territory of the same name and could, therefore, be understood
in any of the EU’s official languages as designating the origin or geographical destination of the
goods and services concerned. OHIM further considered that the mark at issue was clearly devoid
of distinctive character. Les Marques de l’√Čtat de Monaco (MEM), a Monegasque public-limited
company which succeeded the government of the Principality of Monaco as the proprietor of the
trade mark, contested OHIM’s decision before the General Court and sought the annulment of that
decision.

The General Court observed that the word ‘monaco’ corresponds to the name of a
globally-known principality, not least due to the renown of its royal family, its organisation of a
Formula 1 Grand Prix and its organisation of a circus festival. Knowledge of the Principality of
Monaco is even more established amongst EU citizens, notably on account of its borders with a
Member State (France), its proximity to another Member State (Italy) and its use of the same
currency as 19 of the 28 Member States, the Euro. There is therefore, the Court ruled, no doubt that the word ‘monaco’ will evoke, regardless of the linguistic background of the relevant public, the
geographic territory of the same name.

According to the General Court, OHIM was also correct to find that the word ‘monaco’ could be
used, in trade, to designate origin, geographical destination or the place of supply of
services, so that the trade mark has, in respect of the goods and services concerned, a
descriptive character. Furthermore, as a descriptive mark is necessarily devoid of distinctive
character, the General Court holds that the trade mark MONACO is devoid of distinctive
character.

In case you are wondering, yes, the Principality of Monaco has brought UDRP proceedings previously, such as in this case where they successfully obtained the transfer of Principadodemonaco.com. Fortunatly however, they have not tried to obtain MONACO.COM which is owned and used by a fire and security systems company in Jacksonville, Florida. You may recall that in 2000, the city of Barcelona used the UDRP to successfully obtain the transfer of BARCELONA.COM, and the transfer was subsequently upheld by a US district court. But fortunately the  United States Court of Appeals for the Fourth Circuit ultimately restored the domain name's ownership to the original registrant, Barcelona.com, Inc., which still owns and operates the domain name today.



No comments: