Court of First Instance of the European Communities Press Release (103/09), 19 November 2009
Judgment in Case T-234/06 Giampietro Torresan v OHIM
The trade mark is purely descriptive of the fact that the average consumer who is reasonably circumspect may think that it constitutes a description of the characteristics of the product
In 2003, Mr Giampietro Torresan obtained from OHIM, the Community Trade Marks Office, the registration as a Community trade mark of the word sign CANNABIS in respect of beers, wine and spirits. Following an application filed by Klosterbrauerei Weissenohe GmbH & Co. KG, established in Germany, the mark was declared invalid by OHIM, which found that it was descriptive. It found that the word ‘cannabis’ designated, in everyday language, a textile plant or a narcotic substance and that it was, for the average consumer, a clear and direct indication of the characteristics of the goods for which it had been registered.
Mr Torresan disputes that decision and maintains that the trade mark CANNABIS has distinctive character, given that it is both a common name and a purely fanciful mark and has no connection, even indirect, with beer and beverages in general. As a common name, the word ‘cannabis’ constitutes the scientific name of a flowering plant from which certain drugs are extracted and from which certain therapeutic substances may be obtained. The sign CANNABIS has been present on the Italian market as a trade mark since 1996. It has, since 1999, acquired a high degree of renown as a Community trade mark for beers, wine and spirits. In any event, the word ‘cannabis’ does not constitute the normal way of designating beers or alcoholic beverages.
The Court points out, first, that the word ‘cannabis’, also referred to as ‘hemp’, has three possible meanings, namely:
The Court also points out that cannabis is used in the food sector in different forms (oils, herbal teas) and in different preparations (teas, pasta, bakery and biscuits, alcoholic or non-alcoholic beverages, etc.), all of which contain a very low concentration of THC and therefore have no psychotropic effects.
The Court also states that the Regulation on the Community Trade Mark prohibits the registration of descriptive signs and indications which may, in trade, designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production and may serve, in normal usage from the point of view of the target public, to designate, either directly or by reference to one of their essential characteristics, the product. Those descriptive signs are incapable of fulfilling the indication-of-origin function which forms an integral part of the trade mark. A mark’s descriptive character must be assessed in relation to the goods for which the mark was registered and in the light of the presumed perception of an average consumer of those goods, who is reasonably well informed and reasonably observant and circumspect.
The Court therefore establishes whether the average consumer may think, merely on seeing a beverage bearing the trade mark CANNABIS, that that mark describes the characteristics of the goods in question.
First, it states that there is a material link between the sign CANNABIS and certain characteristics of the goods in question as cannabis is used in the manufacture of numerous foodstuffs, including beer and certain beverages. Secondly, the Court states that the word ‘cannabis’ is a Latin scientific term which is well known, is present in a number of European Community languages and has had a lot of media coverage, rendering it comprehensible to the target consumer throughout the Community. Consequently, the average consumer will perceive the trade mark CANNABIS as a description of one of the characteristics of those goods. The Court points out that that characteristic is a determining factor for the consumer when he makes his purchase because he will be attracted by the possibility of obtaining similar sensations to those he obtains from the consumption of cannabis.
On those grounds, the Court dismisses Mr Torresan’s action and upholds OHIM’s decision to declare the registration of the trade mark CANNABIS to be invalid in respect of beverages potentially containing hemp.