OHIM GEOGRAPHICAL DECISION

The IPKat brings news of a slightly puzzling OHIM Second Board decision.

Pernod Ricard applied to register a figurative mark, consisting of the word MONTANA and a depiction of a mountain range, as a CTM for alcoholic beverages in Class 33. The application was refused, since MONTANA is the name of an American state, and as such was directly geographically descriptive of the origin of the goods. As a result, it would not be viewed as being distinctive. Moreover, the graphical element was banal, and did not turn the mark into a distinctive mark. Pernod Ricard appealed.

The examiner’s decision was annulled.

Although Montana is the name of a North American state near the Canadian border, it is not a wine-producing region, and in fact only has three wineries, compared to California’s 850 and, as such, figures very low down in the ranking of wine-producing US states.

Consequently, bearing in mind Montana’s lack of reputation for wine, and the fact that the low level of wine production meant that it was unlikely that wine from Montana would enter the market, it was unlikely that consumers would mentally associate the applied-for mark with wine from Montana. Moreover, the figurative element of the mark imbued it with the minimal degree of distinctiveness necessary for registration and it did not strengthen the reference to Montana the state, since the state is known as much for its Great Plains as its mountains. It was not banal, since mountains could be represented in many different ways. As a result, the mark was distinctive.

The mark was not descriptive since the figurative element prevented it from consisting ‘exclusively’ of a sign which may serve in trade to designate the geographical origin of the goods.

The IPKat reckons that the Board is imputing a large degree of knowledge about American wine-making to the average consumer. Moreover, the fact that Montana doesn’t currently produce much wine doesn’t mean that it won’t produce more in the future. This is the type of consideration that should be taken into account under the need to keep free for descriptiveness purposes.