• Camino Lituano is a section of St Jacob’s way which passes through the territory of Lithuania

• The Appeals Division found that the sign CAMINO LITUANO would be perceived only as describing the content and subject matter of goods in Class 16

• The evidence filed by the applicant, the St Jacob’s Way Association, was insufficient to prove acquired distinctiveness through use

Background

On 1 October 2020 the applicant, Sv Jokubo kelio asociacija (‘St Jacob’s Way Association’ in Lithuanian) filed an application (No 2020 0305) for registration of the word mark CAMINO LITUANO for “geographical maps; books; pamphlets; sealing stamps; booklets” in Class 16.

The examiner of the State Patent Bureau refused to register the mark on the grounds that:

• it was devoid of any distinctive character (Article 7(1)(2) of the Trademark Law); and
• it consisted exclusively of a sign or indication which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or of rendering of the service, the mode of production or other characteristics of the goods and/or services (Article 7(1)(2) of the law).

The applicant filed an appeal against the decision and included an additional ground – Article 7(2) of the law, which allows the registration of a mark if, before the date of application for registration, that mark has acquired distinctive character through use.

The sign consists of two Spanish words, ‘camino’ and ‘Lituano’. The Spanish word ‘camino’ is a commonly used abbreviated name for the pilgrimage way known as Camino de Santiago. St Jacob way is one of the most important Catholic pilgrimage routes, known for over 1000 years. Its purpose is to reach St Jacob’s Cathedral in Santiago de Compostela, Spain, and branches starting from Northern Spain lead to many European countries. Lithuania joined the St Jacob’s way network in 2016. The Lithuanian section of the St Jacob’s way consists of five roads. It is customary to refer to the section of the pilgrimage route going through a certain territory by using the word ‘camino’ and the name of that specific country, such as Camino Portugues in Portugal and Camino Polaco in Poland.

Appeals Division decision

Signs which directly designate the product or service for which they seek registration or which indicate one of their essential characteristics may not be registered. In the present case, it was necessary to assess whether there was a direct and specific link between the sign and the goods at issue. Pursuant to the EUIPO trademark guidelines, a sign should be refused registration where it consists exclusively of a word that describes what may be the subject matter or content of the goods or services in question.

The Appeals Division of the State Patent Bureau found that the sign CAMINO LITUANO refers to a specific object – that is, the section of St Jacob’s way passing through the territory of Lithuania. Lithuanian consumers are familiar with the semantic meaning of the verbal element ‘Camino Lituano’ and the sign would be perceived by the relevant consumers only as describing the content and subject matter of the goods in Class 16 – namely, printed material conveying information on St Jacob’s way in Lithuania.

As regards acquired distinctive character, the Appeals Division noted that website links containing articles and radio and television records published in 2019-2020 about St Jacobs way in Lithuania could not be considered as sufficient evidence of acquired distinctiveness, as the information available through the links or URLs could be subsequently altered or removed. In addition, in the articles and programmes cited by the applicant, the information on Camino Lituano was not linked to the St Jacob’s Way Association itself. The Appeals Division thus concluded that the evidence filed by the applicant was insufficient to prove acquired distinctiveness through use.

The term to appeal the decision of the Appeals Division expired on 17 May 2021. At time of publication it was unknown whether an appeal had been filed.

This article first appeared on WTR Daily, part of World Trademark Review, in May 2021. For further information, please go to www.worldtrademarkreview.com.