Application Refused Due to Conflict With US Geographical Indication

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Published in “World Trademark Review Daily”, 2010

The Romanian State Office for Inventions and Trademarks has refused to register the trademark BOURBON COCKTAILS & COFFEE (Application 095027, filed on May 28 2008) for “services for providing food and drink” in Class 43 of the Nice Classification, based on an opposition filed by Distilled Spirits Council of the United States (DISCUS), a US non-profit organization which represents the interests of producers and traders of spirit drinks, including Bourbon whiskey (September 2009, released in March 2010).

The office rejected the application on the grounds that the word ‘cocktails’ in the mark applied for would allow consumers to establish a link between the geographical indication Bourbon and “services for providing food and drink”. Therefore, in the office’s view, the registration of the mark “would exploit the reputation of the geographical indication [Bourbon]”. Finally, the office found that the mark applied for lacked distinctiveness.

Other IP offices (eg, Costa Rica, China, Brazil and Spain) have refused to register trademarks containing the word ‘Bourbon’ based on oppositions filed by DISCUS. The decisions highlighted that:

  • Bourbon is an indication of origin/geographical indication from the United States; and
  • If the trademarks at issue were registered, consumers would be misled as to the origin of the goods.

Bourbon whiskey was recognized as a distinctive product of the United States by the US Congress on May 4 1964 (similarly, Cognac has been recognized as a distinctive product of the Cognac region of France, and Scotch whiskey as a distinctive product of Scotland). Bourbon whiskey is subject to the US laws and regulations on the production, labelling and advertising of spirit drinks, which define ‘Bourbon whiskey’ as “a whiskey produced at not exceeding 160º proof from a fermented mash of not less than 51% corn, rye, wheat, malted barley or malted rye grain, respectively, and stored at no more than 125º proof in charred new oak containers”. To be sold under the designation Bourbon whiskey, a product must conform to the highest standards and be manufactured in accordance with the laws and regulations of the Unites States.

Bourbon whiskey has also been recognized as a distinctive product of the United States through international agreements and conventions. For example, the European Union and the United States reached an agreement, through an exchange of letters, on the mutual recognition of certain distilled spirits/spirit drinks. Based on this agreement, the European Union adopted Commission Regulation 936/2009/EC applying the agreements between the European Union and third countries on the mutual recognition of certain spirit drinks. According to the regulation, the Bourbon denomination may be used only for products manufactured in compliance with US laws and regulations.

Moreover, Regulation 110/2008/EC on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks provides that the geographical indications recognized at the EU level are protected against “any other practice liable to mislead the consumer as to the true origin of the product”. The regulation also provides that the registration of a trademark which contains, or consists of, a registered geographical indication shall be refused or invalidated if its use would lead to any other practice liable to mislead consumers as to the origin of the goods.

In the present case, the office relied on the provisions of Regulations 936/2009/EC and 110/2008/EC, which are directly applicable in the Romanian territory.

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