Can a generic term be protected as a Trademark?

December 15,2018:

Six years ago winery J Portugal Ramos Vinhos filed an application for the cancellation of several Trademarks of their rival Adega Cooperative de Borba.

This application was first filed at the Intellectual Property Court, Portugal. One of these contested marks is ‘adegaborba.pt’, designed for J Portugal’s wines.

J Portugal argued that this mark does not contain any distinctive characters and should be cancelled. As the mark only mentions the geographical area and the facility where the wine is produced.

According to the European Union trademark law, marks lacking any distinctive character cannot be registered. On this ground, J Portugal Ramos Vinos requested the Court to cancel the registration of their rival's trademarks. J Portugal stated as the contested trademark does not contain any distinctive character, therefore it should be cancelled.

The application was first dismissed by the Intellectual Property Court, Portugal and later by Lisbon Court of Appeal.  Both of these Courts found the mark to be distinctive. J Portugal applied against this decision with the Supreme Court of Portugal.  This case was then referred to the Court of Justice of the European Union (CJEU). The Court decided in their favour of J Portugal.

On 6^th December 2018, Court of Justice of the European Union (CJEU) ruled in favour of J Portugal Ramos Vinhos stating that the registration of the mark should be cancelled.

The Court further stated that in Portuguese, the term ‘adega’ means either the place where wine is stored or where it is produced and the term ‘ Borba’ means the geographical location where the wine is produced. Both of these terms are descriptive, not distinctive, due to which the registration of the mark ‘adegaborba.pt’ should be cancelled.

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