ECJ takes a final trademark decision on “Plombir”

Wanna cool down? Enjoy some “Plombir”! It is summer. The sun is shining, it is hot and you are looking for something to cool down a bit. How about a “Plombir”? You do not know what “Plombir” is? It is a kind of ice-cream that is very popular in the Russian Federation. But instead of only being used to COOL people down, it has been the subject of HEATED debates at the EUIPO and in Germany over the past about 10 years regarding the question whether or not the term “Plombir” was descriptive for ice-cream. Here is what the European Court of Justice (ECJ) decided on 18 June 2020.

(source: Shutterstock.com, No. 1280544706)

1.  Background

The German company Dovgan GmbH is the owner of several word and figurative trademarks containing the term “Plombir” in Germany and at the EUIPO. The trademarks are mainly registered in classes 29 and 30 for, among others, edible ice-cream and the goods are sold widely across Germany.

Based on its registered trademarks, Dovgan GmbH tried prohibiting use of the word “Plombir” by third parties and the mark became the subject of invalidity proceedings. It was claimed that the word “Plombir” should not be monopolized, but needed to be kept available for the public, particularly for trade and export. It was asserted that the contested mark was the transliteration into Latin characters of the Cyrillic word “Пломбир”, meaning “ice-cream” in Russian. Thus, it was purely descriptive for edible ice-cream and could not serve as a registered trademark.

The cancellation proceedings kept the trademark offices and courts busy over several years.

2.  Decision

German and European Union trademark law provides that signs or indications that may serve, in trade, to designate characteristics of the goods or services for which trademark registration is sought, may be freely used by all. The provision aims to prevent monopolizing the use of a descriptive term to the detriment of other undertakings, including competitors, for whom the extent of the vocabulary available to describe their own products would be reduced.

The descriptive character of a sign must be assessed in relation to the goods or services concerned and in relation to the perception of the public targeted, which is composed of the consumers of those goods or services in the European Union – or “part of the Union”. Also, “Part of the Union” is to be determined on a case to case basis. It can be a Member State or a group of Member States of the European Union. But, as the ECJ now confirmed in the most recent decision dated 18 June 2020 regarding “Plombir” ice-cream, the term “part of the Union” can also apply to a territory smaller than the territory of a Member State.

In the same decision, the court had to determine if the word “Plombir” in Latin characters was understood by the relevant public in the EU as describing ice-cream. The issue was that  Russian is not an official language of the European Union. However, the ECJ held that the descriptive character of the trademark “Plombir” should be examined from the point of view of Russian speaking consumers who are members of the general public of the EU and reside, in particular, in Germany and the Baltic States as “part of the Union”. In this context, the court confirmed that it was a well-known fact that a significant proportion of Baltic State nationals know Russian or speak it as their mother tongue. Also, the court agreed with the cancellation applicant that the Russian-speaking public in the European Union was likely to use means of communication which cannot process Cyrillic characters and that it was therefore accustomed to transliterating Russian words into Latin characters. Taking all that into account, the court found that as the word ‘plombir’ constitutes a faithful transliteration of the word ‘Пломбир’ into Latin characters known to the relevant Russian-speaking consumer in the EU, its descriptive meaning will be immediately and directly understood by that consumer.

Overall, the court thus confirmed that the evidence provided by the cancellation applicant had sufficiently proved that, in the European Union, the term “Plombir” was descriptive for “ice-cream” and could not serve as a registered trademark for such goods.

3.  Conclusion

The decision is of interest as it confirms that a sign can be precluded from trademark protection even if an absolute ground for refusal only exists in part of a Member State of the European Union. Also, it is another example that words taken from a common language – regardless of whether or not that language is an official language of the European Union – will most likely not be eligible for trademark protection. The issue often arises with words from languages like English, Spanish, Russian or Turkish. But also, more figurative languages like Japanese, Chinese or Korean will soon have to be looked at more closely as the relevant public in the EU that understands these languages steadily grows.

Should you consider registering a word that can be found in a dictionary as a trademark in Germany or with the European Union Intellectual Property Office, you are welcome to contact us by email at info@lexdellmeier.com or by phone at 0049 89 55 87 98 70 to discuss possibilities to proceed.

However, for the moment, sit down, enjoy summer and treat yourself to some “Plombir” or another ice-cream…