The “Golden Mile”: an indication of quality?
The month of July brought us an interesting Judgment of the Court of Justice of the European Union in Case C-139/2016 between Moreno Benavente family and Bodegas Abadía Retuerta, SA.
Moreno Benavente, owners of the Spanish trademark M-2.841.993, “La Milla de Oro” – The Golden Mile- to protect wines, filed a claim against Abadía Retuerta before the Commercial Courts of Burgos for the use of the sign “El Pago de la Milla de Oro “in the labeling of their bottles. According to the plaintiffs, the use made by the defendant of the distinctive sign could confund the consumers.
Abadía Retuerta responded the claim and counter-claimed the cancellation of the trademark “La Milla de Oro” for being indicative of the geographical origin of the products.
According to the defendant, wine sector consumers associate this term with a specific geographical area within the Ribera del Duero Appellation of Origin where some of the most reputed wineries, such as Pago de Carrovejas, Vega Sicilia and Pingus, are located.
The Commercial Court of Burgos declared the cancellation of the trademark the “La Milla de Oro”, leading to a subsequent appeal of the ruling.
The appellants defend in their appeal that the ” La Milla de Oro ” is just a fancy name which is common in other wine producing areas, such as La Rioja, and other sectors, like in Madrid, where an area of the Barrio Salamanca is commonly know as “Milla de oro” due to the great concetration of luxury shops.
In view of the above, the Audiencia Provincial de Burgos suspended the proceedings and raised the following questions to the CJEU:
- Could a sign that refers to the characteristic of a product or service which is that it can be found in abundance in a single place with a high degree of value and quality, be descriptive?
- Could the abovementioned sign be regarded as an indicator of geographical origin insofar as the concentration of the product or service will always be in a given physical space?
The CJEU considers that the sign “La Milla de Oro” cannot constitute an indication of geographical origin, since it must necessarily be accompanied by a name designating a geographical place in order to identify the physical space to which it refers. Thus, the term ” La Milla de Oro ” could be associated with other areas with important concentration of products or services whose only common point is their high level of quality.
As per the first question, the CJEU understands that “The Golden Mile” refers to the characteristic of a product or service which is that it can be found in abundance in a single place with a high degree of value and quality. Therefore it might be deemed descriptive and being cancelled.
Now it is turn of the Provincial Court that will have to decide whether or not to cancel the trademark on the basis of the CJEU analysis. Subsequently, if the trademark it is not cancelled, the court must assess the likelihood of confussion between signs.
Related Posts:
- On the perception of the terms “ifitness” and “fit” in the mind of the Spanish average consumer.
- Jugdement of Audiencia Provincial de Alicante of 12 January 2012, “Omega”
- “Port Charlotte” Decision: How Member States’ national GIs affect Community Trademark Registration
- Four Recent Judgments of the Spanish Supreme Court relating to Trademarks (III): “Champín”