Back in August 2020, we reported on the interesting case of the cancellation of an EU trade mark registration for the figurative trademark “La Irlandesa” – see The Irish Woman Wasn’t Irish After All – MacLachlan & Donaldson
At that time the Board of Appeal had declared that the figurative trademark “La Irlandesa”, which had been registered in respect of an array of food products, was invalid, and consequently, should be removed from the EU trade mark register, since it was deceptive as to the geographical origin of the goods since consumers would believe the products originated from Ireland.
This decision was appealed to the EU General Court and, on 29 June 2022, the EU General Court (GC) issued its much-awaited decision.
The General Court has stated that the mark is NOT invalid on grounds of deceptiveness since it was not deceptive when the application for registration was filed. The Court of Appeal erred since it did not assess the deceptiveness at the correct date.
At the time of filing the Applicant had been selling butter which did originate from Ireland under the trade mark. Since the goods were from Ireland the mark was not deceptive at the relevant time.
The cancellation was however upheld on the basis of bad faith.
This was because the applicant then extended the use of the mark to other goods which did NOT originate from Ireland. It was believed that in so doing they were attempting to have the goodwill associated with products from Ireland transferred by association under the mark to goods which did not originate from Ireland thereby deceiving the average consumer and this was believed to have been their intent in filing the application for registration. As stated in the decision:-
“Such conduct is evidence of bad faith inasmuch as it shows that, when filing the application for the contested mark, the applicant intended unfairly to transfer the advantage derived from the association with Ireland to goods not having that geographical origin…”.
The end result therefore remains the same and the registration has still been cancelled but only on the grounds of bad faith.