The Monégasque government had been granted registration of the word mark by the World Intellectual Property Office (WIPO) back in 2010. In 2013, the Office for Harmonisation in the Internal Market (OHIM) refused protection of the mark in the European Union on the grounds that the mark was too descriptive of the territory. OHIM felt that the mark would be understood in the EU as being descriptive of the origin or destination of the goods or services in relation to which the mark was applied for. Moreover, OHIM felt the mark was devoid of distinctive character.
The government sought the annulment of OHIM's decision. On 15 January, the General Court upheld the decision by OHIM to refuse to give trade mark protection to MONACO in the EU. The Court observed that the mark "designates the origin or geographical destination of the goods and services concerned and is devoid of distinctive character". In doing so, it pointed to the principality's high profile royal family and its Formula 1 connections as helping to connect the word Monaco inextricably with the place. The fact that the principality shares borders with EU states and uses the Euro also influenced the Court's finding that, for citizens of the EU,"the word ‘monaco’ will evoke… the geographic territory of the same name". Accordingly, the Court found that OHIM was correct in its decision that the mark was descriptive and, necessarily, lacking distinctive character.
Although an attempt to trade mark the name of a sovereign state is unusual, refusal to register marks on the grounds that the mark is descriptive and lacking distinctive character is not. Trade marks will only be registered if they are distinctive for the goods and services in relation to which registration is sought, so the mark needs to be recognised as a sign that differentiates the applicant's goods or service from those of a competitor. As Monaco has found to its cost, the mark cannot simply describe the goods or services it will relate to.
When you are thinking about whether to seek trade mark protection for your brand, it is important to think about these issues which may prevent registration. In particular, I suggest any principalities looking at protecting their brand rethink that deal to become the home of a globally famous sporting event. Liechtenstein, I'm looking at you…