TRADEMARKS | General Court on the validity of a trademark consisting of a geographical name

On 28 February 2024, the General Court of the EU issued a decision in cases  T-746/22 and  T-747/22 concerning the distinctive character of a trademark consisting of a geographical name. The cases at issue concern two EU trademarks (the “Trademarks”) claiming the name “COMPTON” (name of an American city near Los Angeles) for bags, clothing and footwear. The General Court provided some useful guidelines to assess whether a trademark consisting of a geographical name is descriptive. Specifically, the Court stated that, to be descriptive (a) the name claimed by the trademark must be known by the relevant public as the designation of a geographical place; (b) there must be an association, in the mind of the relevant public, between the goods at issue and said geographical place. Based on this, the BOA deemed the Trademarks distinctive after assessing that only a minor percentage of the relevant public would be aware that the name “COMPTON” refers to the American city near Los Angeles and that there would be no association, in the mind of the relevant public, between the goods and the city of Compton.

Newsletter n. 95 – April 2024