TRADEMARK – Identical or similar logos can be cumulatively registered as protected designation of origins and collective trademarks said the EUIPO BoA

Newsletter n. 91 – December 2023

TRADEMARK

Identical or similar logos can be cumulatively registered as protected designation of origins and collective trademarks said the EUIPO BoA

On 15 November 2023, the Board of Appeal of EUIPO (BoA) issued its judgment in case R 1073/2022-5 and ruled that the logo of the “Grana Padano” protected designation of origin (PDO) can be registered by the Grana Padano Consortium also as a collective trademark. The BoA ruled out the risk of deception on the public by firstly highlighting that the EU Trademark Regulation does not expressly prohibit cumulative protections of collective trademarks and protected geographical indications, even where the signs in question are similar or identical. Further, the risk of deception would be excluded by the fact that the collective trademark would be used only on the packaging of Grana Padano’s cheese while the PDO logo is placed on cheese wheels and that in any event any party authorised by the Consortium to use the collective trademark, would necessarily be a party which is already entitled to use the PDO. Lastly, the BoA found that the collective trademark would fulfill its essential function of indicating the commercial origin of the product by being placed on the cheese’s package, thus being distinctive.