The Golden Mile

1 Aug 2017 , 1:49pm

Madrid's famous 'Golden Mile' was the subject of an ECJ hearing over a disputed trademark. Partner Maung Aye of Mackrell Turner discusses the findings.

Many of those who have been to Madrid will be familiar with the area of Barrio de Salamanca and Calle de Serrano, the famous 'Golden Mile' - a street lined with international designers such as Louis Vuitton, Gucci and Cartier.

The recent case of Juan Moreno Marín and others v Abadía Retuerta SA which made its way to the ECJ sought to clarify whether a trademark which referred to the 'Golden Mile' should be declared invalid on the grounds it breached Article 3(1)(c) of the Trade Marks Directive (2008/95/EC)  which states that the following shall be declared invalid: 'Trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service.'

Ms Benavente Cárdaba and Mr Moreno Benavente are the proprietors of the Spanish trade mark 'La Mille de Oro' (translated as 'The Golden Mile') in respect of wines. The trade mark was originally granted to Mr Moreno Marín by the Spanish Patent and Trademark Office in 2009 and he subsequently transferred it to Ms Cárdaba and Mr Benavente.

In the main proceedings, the applicants brought an action against the company Abadía Retuerta SA (AR) in the Spanish Commercial Court. They alleged that AR’s use of the sign 'El Pago de la Milla de Oro' on the labels of the wines it produces was likely to confuse consumers who would assume that those wines were in fact the same as those sold by Ms Cárdaba and Mr Benavente. 

AR contested the claim and lodged a counterclaim which sought to declare Ms Cárdaba’s and Mr Benavente’s trademark, 'La Mille de Oro' as invalid.  Its argument centred around the allegation that the trade mark constitutes an indication of geographical origin which, if proved, would fall foul of the prohibition under Spanish law which states that the following shall not be registered: 'Signs consisting exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the good or service.' 

AR argued that 'La Mille de Oro' is used in the wine growing sector to refer to a very specific area where both parties operate and therefore it is a clear indication of geographical origin. The Spanish Court took the view that while the trade mark did not, on the face of it, refer to a specific geographical location, it is still associated with a place characterised by a high concentration of high-quality goods. It therefore referred two questions to the ECJ:

1. Do the prohibitions in Article 3(1)(c) of the Directive include the use of a sign referring to the characteristic of a product or service; which is that it can be found in abundance in a single place with a high degree of value and quality?

2. Can a sign with such characteristics be regarded as a sign of geographical origin in so far as the product or service will always be concentrated in a specific physical area?

In relation to the second question, the ECJ found that a sign such as 'La Mille De Oro', referring to the fact that the goods could be found in abundance in a single place with a high degree of value and quality, could not in fact be an indication of geographical origin. In order to do so, it had to also be accompanied by a place name to enable consumers to identify the physical place where the products were concentrated.

The ECJ also held, in relation to the first question, that Article 3(1)(c) of the Directive must be interpreted as meaning that a sign such as 'La Mille De Oro' is unlikely to have characteristics which, if used as a trade mark, would constitute a ground for invalidity within that provision.

In such circumstances the relevant national court would have to ascertain whether the sign could be perceived by the public as being descriptive of a characteristic of the product, such as the fact of where it could be found with high value and quality. Assuming the court found that it did not describe such a characteristic, the court would still need to decide whether that sign had any distinctive character since Article 3(1)(b) of the Directive states that trademarks which are devoid of any distinctive character are liable to be declared invalid.

The ECJ noted that any promotional connotations that the sign had would not necessarily prevent it from indicating its commercial origin and thus qualifying as distinctive.