On October 7, 2013, the Association of Producers of Morcilla de Burgos applied to register the collective mark “MORCILLA DE BURGOS,” characterized by the colors black, gray, and red, to distinguish blood sausages (“Morcilla”) from the geographic region of Burgos, in the Spanish country.

The IGP Morcilla de Burgos Association filed an invalidity action against all goods and services of the EUTM holder, arguing that the term unequivocally describes the meat products and their geographical origin, as perceived by the relevant Spanish public. They claimed that the mark infringed the absolute grounds for refusal under Article 7(1)(c) and (b) EUTMR, asserting that the stylization was minimal and that the colors merely described the product. Consequently, they argued that the mark lacked the capacity to divert consumer attention from its descriptive message.

The invalidity request was upheld, and the Cancellation Division found the collective mark to be non-distinctive and descriptive. In response, the EUTM holder appealed, requesting that the decision be overturned. They argued that “Morcilla de Burgos” represents a specific product with unique characteristics rather than simply describing a type of product. Additionally, they claimed that the mark’s figurative elements and distinctive layout contributed to its uniqueness.

The holder further argued that the mark had acquired distinctiveness through prolonged and intensive use in Spain over more than a decade, in accordance with Article 7(3) EUTMR. However, the Board rejected this argument, as it had not been raised previously.

The Board focused its analysis on the alleged bad faith claimed by the applicant for invalidity, who argued that the mark was both non-distinctive and descriptive within the relevant territory, which in this case was Spain within the EU. “Morcilla de Burgos” was deemed by the applicant to be a clear description of the product’s characteristics.

Regarding the alleged descriptiveness, the Board acknowledged that while the name might have a descriptive nature, it was necessary to consider the figurative elements and stylized presentation of the mark—including the use of uppercase letters, italics, varying font sizes, and colors. The stylization, including the extended letterforms, imparted a degree of creativity, thus conferring distinctiveness to the mark as a whole.

Therefore, considering the totality of the figurative elements, the Board concluded that the mark would not be perceived as descriptive. Although there is a direct connection between the conveyed message and the characteristics of the goods and services, the mark is sufficiently distinctive due to its figurative elements. Consequently, the mark does not fall under the absolute ground for refusal in Article 7(1)(c) EUTMR.

As for the absolute ground under Article 7(1)(b) EUTMR, which precludes the registration of a non-distinctive mark, a trademark must serve to identify commercial origin, distinguishing the products from those of other associations. Article 74(2) EUTMR allows geographically descriptive collective marks to fulfill their function of indicating collective commercial origin. Thus, the Board concluded that the expression “MORCILLA DE BURGOS” is non-descriptive due to the distinctive elements mentioned, which together create a strong impression on the relevant public. It was therefore determined that the contested mark meets the minimum threshold for distinctiveness.

In conclusion, the appeal was upheld, annulling the impugned decision of the Cancellation Division, and it was determined that the contested collective EUTM possesses distinctiveness and is non-descriptive.

DECISION of the First Board of Appeal of October 29, 2024, in Case R 376/2024-1