Background
For the uninitiated, situated in the Scottish town of St Andrews and comprising seven golf courses, St Andrews Links is regarded by many as the home of golf.
In 2010, St Andrews Links sought to increase its trademark portfolio, which already included the marks ST ANDREWS LINKS and THE HOME OF GOLF, by applying to register the mark ST ANDREWS as an EU trademark. The application was made for goods and services in Classes 25 (clothing), 28 (games and video game machines), 35 (retail services) and 41 (conferences, events, training, education, publication of books and online computer games).
In 2016, the examiner refused the application for all classes sought, on the basis that acquired distinctiveness had not been proved and that the mark was descriptive of certain positive characteristics of the goods and services covered (Article 7(1)(b) and (c) and (3)).
The examiner’s decision was annulled by the Board of Appeal in October 2017 in respect of the goods and services in Classes 25, 28, 35 and online computer games in Class 41. However, the board upheld the examiner’s decision for the remaining Class 41 services. It found that ST ANDREWS was geographically descriptive for the purposes of Article 7(1)(c), but only for goods and services directly related to golf, which it did not take to include clothing, video games or retail services.
St Andrews Links appealed, submitting to the General Court that the board was incorrect in finding that the mark was perceived by the relevant public as an indicator of geographic origin.
Reputation versus geographic origin
St Andrews Links’ first argument was that the relevant public would attach greater weight to its reputation than to the geographic origin of the services. The court rejected this argument, noting that, understandably, St Andrews Links disputed neither that 'considerable reputation of the town of St Andrews for golf sports' nor that at the very least golf enthusiasts would associate the town with golf.
Referring to Case T-878/16 KARELIA and the case law cited, the court confirmed that it is sufficient for the purposes of Article 7(1)(c) that 'at least one of [a mark's] possible meanings designates a characteristic of the goods or services concerned.' With St Andrews not disputing at least some association between the town and the sport, it was irrelevant whether a different meaning (here, the reputation of St Andrews Links) held a greater weight in the minds of the relevant public.
Guidance on the relevant public
St Andrews Links did not dispute that the relevant public comprised both average consumers and golf professionals and amateurs. Nonetheless, the General Court confirmed that in order for the absolute ground of Article 7(1)(c) to preclude the registration of a mark, it is sufficient that the ground merely exist in relation to a non-negligible section of the relevant public. If this can be established, the awareness of other consumers belonging to the group is irrelevant, even if the average consumer would fail to make a link between the mark and the geographic origin.
Link between the services and the descriptive characteristic
St Andrews Links also argued that the services in dispute were not specifically associated with golf and would therefore not automatically be perceived by the relevant public as being specifically linked to golf.
The court did not accept this argument, holding that the Board of Appeal was correct in finding that the services could all directly relate to golf and associated events and that the services did not possess any quality that would lead the relevant public to disassociate the geographic origin from the geographic indication.
Comment
Building on previous case law, the General Court has confirmed the key principles to be applied when assessing the absolute ground of refusal of geographic descriptiveness. In doing so, the court reaffirmed the public interest considerations underpinning the Article 7(1)(c) ground for refusal, in particular the need to ensure that descriptive marks may freely be used by all, rather than being reserved for use by a sole undertaking. With this in mind, the existence of multiple other major golf courses with claims to the heritage of St Andrews was a recurring theme of the General Court's judgment.
The authors of this article are Jeremy Dickerson and Harry Jewson. If you would like to discuss further, please do get in touch.
This article first appeared on WTR Daily, part of World Trademark Review, in (December 2018). For further information, please go to www.worldtrademarkreview.com