Emmentaler - Swiss cheese and a collective mark?

Is Emmentaler a sysnonym of cheese or of a cheese of Switzerland?

This interesting case-law about the descriptive character of the word mark EMMENTALER and the possibility of protecting a sign with a geographical indication as a collective mark was decided by the European Court (CFI) on 24 May 2023.

The facts

The trademark applicant and plaintiff is the Swiss trade organisation Emmentaler Switzerland. It wanted to protect the term EMMENTALER as a word mark in the EU, as part of an international registration designating the European Union.
Even the Duden dictionary describes Emmentaler as an expressly Swiss cheese with holes. However, it was precisely this Duden entry that the European Patent Office had cited as a reason for rejecting the desired trade mark application because of the descriptive character of the term.

The term EMMENTALER is described in the German-language Duden as "full-fat Swiss cheese with cherry-sized holes and a nutty taste; Emmental cheese" (our own translation of the origin quotation).

So the question was, is Emmentaler a synonym for any cheese with holes or for such a cheese from Switzerland? Because if EMMENTALER as a term is generally regarded as cheese by consumers without any geographical association, this sign is descriptive for the goods claimed in Nice class 29. Terms are considered descriptive if they either describe the goods and services claimed - see e.g. our article on the TOOLTIMES trademark - or are descriptive in the general understanding of the public.

CFI: EMMENTALER is understood as a type of cheese

The CFI held that the relevant German public directly understands the sign EMMENTALER as a designation for a type of cheese and referred to several EU countries where this perception exists.

Accordingly, the plaintiff, the Swiss trade organisation Emmentaler Switzerland, did not dispute the public perception that Emmentaler is a hard cheese with holes. But, they argue, it is clearly a Swiss cheese, and the quote from DUDEN proves this. The Board of Appeal had wrongly relied on this definition, as the Duden does not indicate that this term designates a type of cheese in the German language, but explicitly clarifies that it is a Swiss cheese.

The CFI rejected this argument. Although the Duden entry referred to contained the term "Swiss cheese", this was supplemented by a second definition, namely "Emmentaler cheese", without any further information, in particular on the geographical origin. Emmentaler should therefore also be seen, according to the Duden, as a type of cheese with holes and a nutty taste, the court explained. And since it is sufficient for refusing registration of a sign that this sign is descriptive only in part of the Union, even only in a single member state, EMMENTALER was rightly assessed as descriptive.

The Swiss association thus failed on its most important point. The association wanted to achieve with the complaint that only Swiss Emmentaler may be called so. Cheese that does not come from Switzerland would then have to be named according to its region of origin, for example Fränkischer Emmentaler, Holsteiner Emmentaler or Normannischer Emmentaler.

EMMENTALER - sole position as a collective mark?

The applicant argued in vain that the designation Emmentaler in the sole position should be granted protection as a collective mark under Article 74(2) of Regulation 2017/1001, as it referred to the geographical origin of the goods concerned. There was even political opposition to this, as both the EUIPO and the Federal Republic of Germany and the French Republic objected.

The CFI rejected the applicant's argumentation and elaborated on the interplay between Article 74(2) of that regulation (on descriptive signs or indications which may be described as collective marks) and Article 7(1)(c) of the regulation on descriptive marks. (c) of the Regulation on descriptive marks.

In principle, the court explained, collective marks may also consist of signs or indications designating geographical origin (by way of derogation from Article 7(1)(c)). However, this exception was to be interpreted narrowly and applied only to signs which were considered to indicate the geographical origin of those goods.

However, as the mark applied for described a type of cheese for the relevant German public and was not perceived as an indication of geographical origin for the cheese in question, it did not enjoy protection as a collective mark.

The court therefore dismissed the action in its entirety (CFI, 24 May 2023, T 2/21).

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