DURBANVILLE HILLS THE SCOUT | Decision 692/2016-1

014000000 - 014999999, 014656938, 12, 2017, APPEAL, D-company, D-trademark, Date, Decision Type, DURBANVILLE HILLS THE SCOUT, Durbanville Hills Wines (Pty) Limited, Involved Parties, January-2017, Trademark, Trademark number

DECISION

of the First Board of Appeal

of 12 January 2017

In Case R 692/2016-1

Durbanville Hills Wines (Pty) Limited

Aan-de-Wagenweg

Stellenbosch 7600

South Africa

Applicant / Appellant

represented by JONAS RECHTSANWALTSGESELLSCHAFT MBH, Hohenstaufenring 62, 50674 Köln, Germany

APPEAL relating to European Union trade mark application No 14 656 938

THE FIRST BOARD OF APPEAL

composed of Th. M. Margellos (Chairperson and Rapporteur), M. Bra (Member) and Ph. von Kapff (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

  1. By an application filed on 9 October 2015, Durbanville Hills Wines (Pty) Limited sought to register the word mark

DURBANVILLE HILLS THE SCOUT

for the following goods:

Class 33 – Alcoholic beverages (except beers).

  1. On 26 October 2015, the examiner provisionally refused the application under Article 7(1)(j) EUTMR. According to the examiner, the mark applied for contained the designation ‘DURBANVILLE’, which was a significant part of the geographical indication ‘Tygerberg Durbanville’ for wines, protected under the Agreement between the European Union and the Republic of South Africa on trade in wine, 28/01/2002, OJ L028, 31/01/2002, p. 4. The examiner objected to the mark applied for because the wording of the list of goods in the application covered wines that were not from the geographical indication featured in the mark applied for. The examiner informed the applicant that the objection would be overcome by limiting the goods in the application to ‘wines in conformity with the specifications of the protected geographical indication “Tygerberg Durbanville”; alcoholic beverages other than wines’.
  2. On 10 November 2015, the applicant cited various trade marks that the Office had accepted, including the term ‘Durbanville’(in its name), as well as the terms ‘Cape’ and ‘Africa’, all without a limitation, and argued that the mark applied for could also be registered without a limitation.
  3. On 9 March 2016, the examiner refused the application (‘the contested decision’), because the applicant had not limited the goods in Class 33 to ‘wines in conformity with the specifications of the protected geographical indication “Tygerberg Durbanville”; alcoholic beverages other than wines’ pursuant to Article 7(1)(j) EUTMR. According to the examiner, in order to use the term ‘DURBANVILLE’ in the mark applied for, the list of the goods had to indicate that the wine sold under the trade mark applied for ‘DURBANVILLE HILLS THE SCOUT’ was in conformity with the specifications of the protected geographical indication. The examiner pointed out that the application covered ‘alcoholic beverages (except beers)’ in Class 33, without any limitation as to their origin. Therefore, this wording covered wines that did not originate from the geographical indication in the mark applied for. As regards the similar registrations, the examiner referred to settled case-law, according to which the registrability of a sign as a EUTM had to assessed solely on the basis of the EUTMR, and not on the basis of previous Office practice and that the observance of the principle of equal treatment had to be reconciled with observance of the principle of legality according to which no person could rely, in support of his/her claim, on unlawful acts committed in favour of another.
  4. On 13 April 2016, the applicant limited the goods in the application to the following:

Class 33 – Wines in conformity with the specifications of the protected geographical indication Durbanville, Tygerberg; alcoholic beverages other than wines.

  1. On 14 April 2016, the applicant filed an appeal against the contested decision. The statement of grounds of the appeal was received on 9 May 2016.

Grounds of appeal

  1. The applicant argues as follows:
  • The limitation overcomes the examiner’s objections.
  • The only difference is in the name: In place of the examiner’s proposal of ‘Tygerberg Durbanville’ the specification reads ‘Durbanville, Tygerberg’.
  • The examiner requested ‘wines in conformity with the specifications of the protected geographical indication “Tygerberg Durbanville”; alcoholic beverages other than wines’. It is not entirely correct for the examiner to have required ‘Tygerberg Durbanville’, since ‘Durbanville’ is a ward within the Tygerberg district, of the Coastal Region of South Africa. This is clear from the Schedule of Production Areas Defined in terms of Wine of Origin Scheme, available at http://www.wosa.co.za/The-Industry/Wines-Of-Origin/Wine-Of-Origin-Scheme/).
  • That the correct order is ‘Tygerberg, Durbanville’ is also apparent from various homepages (the applicant cited six examples).

Reasons

  1. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.
  2. The applicant has limited the goods in the application to ‘wines in conformity with the specifications of the protected geographical indication “Durbanville, Tygerberg”; alcoholic beverages other than wines’.
  3. The limitation is clear, precise and unconditional.
  4. Article 7(1)(j) EUTMR provides for the refusal of EUTMs for wines that contain or consist of a geographical indication identifying wines in respect of wines not of such an origin. The relevant date for that Article is the filing date of the application, which in this case is 9 October 2015.
  5. This ground for refusal was added to Article 7(1) EUTMR by Council Regulation (EC) 3288/94 of 22 December 1994 (OJ [1994] L 349/83) to comply with Article 23 of the TRIPs Agreement.
  6. Article 23 TRIPs lays down in sub-paragraph (2) thereof that ‘the registration of a trademark for wines which contains or consists of a geographical indication identifying wines or for spirits which contains or consists of a geographical indication identifying spirits shall be refused or invalidated … with respect to such wines or spirits not having this origin’. Sub-paragraph (4) of that Article refers to the possible facilitation of the protection of geographical indications for wines by means of ‘the establishment of a multilateral system of notification and registration of geographical indications for wines eligible for protection in those Members participating in the system’.
  7. In furtherance of the protection of geographical indications, the European Union and Republic of South Africa concluded the ‘Agreement between the European Community and the Republic of South Africa on trade in wine’, 28/01/2002, Official Journal L 028, 30/01/2002, p. 4 (hereinafter, the ‘Bilateral Agreement’).
  8. According to Article 6(2)(b) of the Bilateral Agreement:

‘(b)        with regard to South African names:

  1. are exclusively reserved in the Community to the wines originating in South Africa to which they apply, and
  2. may not be used otherwise than under the conditions laid down in the laws and regulations of South Africa.’
  1. Pursuant to Article 6(3) of the Bilateral Agreement:

‘The protection provided for in this Agreement shall prohibit in particular any use of indications protected by virtue of this Agreement for wines which are not originating in the geographical area indicated, even when:

(a)        the true origin of the wine is indicated;

(b)        the geographical indication is used in translation;

(c)        the indications are accompanied by expressions such as “kind”, “type”, “style”, “imitation”, “method” or the like.’

  1. Pursuant to Article 8(b) of the Bilateral Agreement:

‘Without prejudice to Article 9 and the Protocol the following names are protected with regard to wines originating in South Africa

  1. the name "South Africa" or other names used to indicate this country,
  2. the geographical indications referred to in Annex II.’
  1. The protected geographical indication ‘Durbanville, Tygerberg’ is listed in Annex II B 2.3.2.(a) of the Bilateral Agreement, which moreover states that ‘Durbanville’ is a ward in the Tygerberg District.
  2. The Bilateral Agreement prohibits the use of the geographical indication ‘Durbanville, Tygerberg’ for wines that do not originate from the geographical area ‘Durbanville, Tygerberg’ in South Africa. The wording of the limitation must be such that the terms of the Bilateral Agreement are respected for that wording to be acceptable. The limitation of ‘wines in conformity with the specifications of the protected geographical indication “Durbanville, Tygerberg”; alcoholic beverages other than wines’ precludes the use of ‘Durbanville, Tygerberg’ for wines not originating from the protected geographical indication ‘Durbanville, Tygerberg’.
  3. With the limitation, the basis for the refusal of the application for the mark applied for has been overcome.
  4. The application must now be allowed.

Order

On those grounds,

THE BOARD

hereby:

  1. Accepts the limitation of the goods in the application to:

‘Wines in conformity with the specifications of the protected geographical indication Durbanville, Tygerberg; alcoholic beverages other than wines’;

  1. Annuls the contested decision;
  2. Remits the case for further prosecution.

Signed

Th. M. Margellos

Signed

M. Bra

Signed

Ph. von Kapff

Registrar:

Signed

H.Dijkema

12/01/2017, R 692/2016-1, DURBANVILLE HILLS THE SCOUT

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