The EU General Court has confirmed that VENERE - a word most Italian rice lovers know well - simply cannot function as a trade mark for rice. It is a timely reminder that registering a plant variety name as a brand can be a high-risk strategy, no matter how much you invest in it. 

The background

In 2010 an Italian Company successfully registered the word VENERE as an EU trade mark for raw rice and a wide range of rice-derived products including rice snacks and even rice alcohol.

In August 2021, the Italian historic rice mill Riso Gallo S.p.A. filed to have the registration declared invalid. Riso Gallo's argument was straightforward: the word "venere" designates a well-known variety of black rice, making the mark descriptive of the very products it was registered for. 

The EUIPO Opposition Division and Board of Appeal upheld Riso Gallo's claims and declared the VENERE registration invalid both for raw rice - as it conflicts with the registered plant variety No. 4481 granted in 1999 - and for rice and rice-based products - because Riso Gallo proved that "venere" had been used as a descriptive term for black rice well before the filing date of the contested registration. 

The trade mark holder was not satisfied and brought the case before the General Court, seeking annulment of the prior decisions.

The General Court’s decision

It was  uncontested that "venere" is the name of a black rice plant variety that received Community protection over a decade before the trade mark was filed. The annulment of the registration for raw rice was therefore confirmed. 

Regarding rice and rice-based products, the trade mark holder argued that any association between the word "venere" and rice was simply the result of the brand's own fame and their use of the word. 

The Court was not persuaded: a broad body of evidence - including cookbook extracts, dictionary definitions, magazine articles and online recipes dating back to 2001 - showed that "venere" was used as a generic term before and at the filing date, independently of any commercial reputation the Company may have built. 

The Court also dismissed the challenge to Riso Gallo's late-filed evidence, concluding that the additional documents were correctly admitted because they supplemented earlier submissions and directly responded to the first-instance findings.

What does this decision mean for brand owners?

• Plant variety names cannot be registered as trade marks. The EU Trade Mark Regulation (EUTMR) expressly provides that plant variety names cannot be registered as trade marks for the goods protected by the plant variety (in this case, raw rice). The rationale is to prevent the monopolization of a generic denomination in favor of a single company. Additionally, if the plant variety name has been perceived as generic denomination of the finished good, as in the instant case, the same cannot be registered as a trade mark due to its descriptiveness. That is why it is crucial to conduct extensive availability searches and a careful assessment of distinctiveness before choosing a mark.
• Investment in a generic/descriptive term doesn't necessarily result in exclusive ownership of the term. Even years of marketing and licensing will not necessarily save a descriptive/generic mark. Evidence of extensive use and recognition of the term on account of a proprietor’s use is likely to be not be sufficient where the word was already a widely-used generic term at the time of registration.
• Late evidence can be admitted on appeal - and it can be decisive. In annulment proceedings before the EUIPO Board of Appeal, new evidence can be submitted for the first time if it supplements earlier submissions or responds to a first-instance finding. Always consult your usual contact at Bird & Bird to discuss the prospects of overcoming a negative decision. 

The full decision of the General Court can be found here.

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