An Unmapped Spanish Golden Mile: The “Indication Of Geographical Origin” Trademark Prohibition

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition
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Spain is famous for wines bathed in the sun. There are various splendid Spanish wine regions: Rioja, Valencia, Penedès, Priorat, Rueda — all of which would, by the way, make fantastic places to go during your holidays if you are still looking for a summer destination.

Another such location is the legendary winemaking region of Ribera del Duero in central Spain, an alluring destination for wine tasting tours,  and the perfect place for aficionados of bold red wines. In the heart of Ribera del Duero, lying along both sides of the Duero River in Valladolid province, is an even more fabled area some people call “la Milla de Oro” (literally, “the Golden Mile”). It is the home of iconic vineyards such as Vega Sicilia, Pingus, Abadia Retuerta and Mauro, and now it is also the focus of a recent trademark decision by the European Court of Justice (“ECJ”).

Marin v. Abadia Retuerta

In 2009, LA MILLA DE ORO was registered as a trademark in Spain with respect to, of course, wines. A few years later, the owners of the mark brought an action in Spain against a competing wine producer, Abadía Retuerta SA, which was using the words “El Pago de La Milla de Oro” on its labels (“Pago” means “estate” and is also a Spanish wine classification).

The plaintiffs alleged that the use of the designation “la Milla de Oro” is likely to give rise to confusion among consumers. But Abadía Retuerta asserted a counterclaim seeking invalidity of the LA MILLA DE ORO trademark, on the grounds that it was an indication of geographical origin and therefore subject to an absolute prohibition on registration pursuant to Spanish law.

The prohibition against the registration of indications of geographical origin originates from European Directive 2008/95/CE, which was incorporated into Spanish law. According to Article 3.1(c) of this Directive:

The following shall not be registered or, if registered, shall be liable to be declared invalid: […] trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services.

The Spanish Court referred to the ECJ the question of whether the prohibition set forth in Article 3.1(c) includes the use of a phrase such as “La Milla de Oro.” The European Court of Justice (ECJ) rendered a decision on July 6, 2017.

“La Milla de Oro” is not an indication of geographical origin

The ECJ agreed with the Spanish Court that “La Milla de Oro” refers to the characteristics of a product or service, namely that it can be found in abundance in a single place with a high degree of value and quality. The ECJ noted that the registration of geographic names as trademarks is prohibited when the names designate places that are, in the mind of the relevant class of persons, currently associated with the category of goods concerned.

In this particular case, the ECJ highlighted that “La Milla de Oro” does not actually designate a specific geographical zone, but rather refers to a specific level of quality of goods and services (i.e., “gold” quality services) in various geographical zones.  For example, in Spain, consumers commonly refer to “la Milla de Oro of the Ribera del Duero” or “la Milla de Oro of Rioja,” thus identifying the best wines of those particular regions. The term is also used to refer to neighborhoods with a concentration of luxury businesses in the cities of Madrid or Marbella.  In other words, the ECJ held that “La Milla de Oro” may refer to several geographic places (such as, for example, the term “downtown”), and therefore it is not an indication of geographic origin under the statute.

Other grounds of invalidity: to be continued

Apart from the issue of whether LA MILLA DE ORO is an indication of geographical origin, the Spanish Court also asked the ECJ whether the registration of the mark was prohibited by Article 3.1(c) because it was merely descriptive. The ECJ basically sent this issue back to the Spanish Court, holding that such determinations were the responsibility of the Member State court during an assessment “in concreto” of all the relevant facts and circumstances.

The ECJ also took the opportunity to suggest to the Spanish Court that there is another potential ground of invalidity. The ECJ explained that, even if the LA MILLA DE ORO mark is not merely descriptive, it may still lack the distinctiveness necessary for registration. Thus, the mark may still be subject to cancellation when the Spanish Court considers these additional issues on remand.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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