The question of whether plant variety denominations can be protected under Article 7(1)(m) of the European Trade Mark Regulation was addressed by the EU General Court for the first time in the dispute over ‘Kordes’ Rose Monique’. Louise van de Mortel sets out the ruling.
The European Trade Mark Regulation (EUTMR) provides an absolute ground for refusal for trademarks which consist of, or reproduce in their essential elements, an existing plant variety denomination. That denomination must have been registered in accordance with EU legislation or national law, or an international agreement to which the EU or the relevant member state is a party and which provides for protection of plant variety rights. In addition, the plant varieties concerned must be of the same or a closely related species. A recent dispute has clarified these grounds for refusal in practice.
Rose breeder Kordes had sought to register the word mark ‘Kordes' Rose Monique’ as an EU trademark (EUTM) in class 31, covering roses, rose plants and rose-propagating stock. EUIPO’s Opposition Division refused registration on the basis of Article 7(1)(m), EUTMR, on the grounds that 'Monique' was a protected plant variety denomination for roses in the Netherlands, and that the denomination constituted an essential element of the EUTM applied for by Kordes.
EUIPO’s Board of Appeal dismissed the subsequent appeal agreeing, among other things, that the word element 'Monique' constituted an essential element within the scope of Article 7(1)(m), EUTMR.
However, on appeal, the EU General Court disagreed, finding that the ‘essential element’ concept is defined neither in the EUTMR itself or in any other provision of EU law. It concluded, therefore, that the concept should be interpreted in the light of the regulation’s purpose, which is to ensure the continuing availability of plant variety denominations.