Background of the case

On 12 December 2011, the Regulatory Council of the Protected Designation of Origin ‘Queso de La Serena’ filed the following EUTM application:

On 8 March 2012, the Regulatory Council of the Designation of Origin ‘Torta del Casar’ filed a notice of opposition against all the goods and services in the contested trade mark application on the basis of the following earlier marks:

European Union trade mark

National trade mark

Also on the basis of a European Union PDO No ES/PDO/0005/0213, registered on 26 August 2003.

That opposition was rejected in its entirety on 4 August 2014 on the grounds that the term ‘torta’ simply designated the rounded, flattened shape of a cheese and that there was therefore no likelihood of confusion.

Torta del Casar filed an appeal against that decision, seeking its annulment.

On 26 September 2016, the Fourth Board of Appeal upheld the contested decision and, finally, on 25 November 2016, the opponent brought an action for annulment of that decision before the General Court. The General Court annulled the decision and found that there was a likelihood of confusion. On 23 April 2018, the appeal was reassigned to the Fifth Board of Appeal. Subsequently, on 10 January 2019, the Office sent a communication to the parties informing that expert evaluations were requested, in order to submit their observations.

On 27 September 2019, the Board adopted a provisional decision with the request for an expert assessment, which was based on the following points:

1) whether the term “Torta” which is part of the PDO “Torta del Casar” constitutes a generic name or a traditional non-geographical name.

2) whether the mark applied for evokes the PDO ‘Torta del Casar’ even though the word ‘Torta’ does not indicate a geographical place.

Decision of the Intellectual Property Office of the European Union

In the review of the proceedings ordered by the General Court, a decisive factor was the expert report which stated in its conclusions that, despite the fact that the recognition of the PDO “Queso de la Serena” predates the PDO, and despite the fact that this product is also a cylindrical soft cheese, it has not traditionally been identified with the name “Torta”, unlike “Torta del Casar”. This fact supports the hypothesis of the protected, non-generic nature of the term ‘Torta’, which is part of the protected term ‘Torta del Casar’.

The Office therefore concludes that the term ‘Torta’ in the Protected Designation of Origin ‘Torta del Casar’, in relation to cheeses, is exclusive to Torta del Casar, a traditional designation. And that the term ‘Torta’ in relation to ‘Cheeses’ is not and has not become a generic term. On the contrary, this term would have a greater significance, being the typical form of a cheese from the region of El Casar.

In conclusion, the European Union Intellectual Property Office upholds the appeal in its entirety, thus rejecting the contested application, stating in the body of the decision that the term ‘torta’, in relation to cheese, is exclusive to Torta del Casar.

Decision of the European Union Intellectual Property Office (EUIPO) in case R 696/2018-5 of 25 February 2021.