The Trademark Fight Over "Acapulco" Ends with Cancellation

The General Court recently issued a decision that trademark enthusiasts will find interesting. On June 13, 2024, the court dismissed the appeal in Taha Karadeniz v. EUIPO (Case T-274/23), officially canceling the trademark registration for the word "Acapulco" for services in Classes 41 and 44. Here’s what went down:

Back in 2019, the trademark proprietor applied to register "Acapulco" as a European Union Trade Mark (EUTM) for health and wellness training in Class 41 and various health-related services like massage, sauna, and bathhouse operations in Class 44. The EUTM was granted under No. 18125766 for these services.

However, things took a turn in 2020 when someone filed an application for invalidity against the EUTM, citing Articles 59(1)(a) and 7(1)(b), (c), and (g) of Regulation No. 2017/1001. The argument? The word "Acapulco" is too descriptive.

According to the EUIPO’s Cancellation Division, "Acapulco" was widely known as a tourist destination in the European Union at the time of the application, and the services for which the mark was registered could easily be associated with the region. Think about it: Acapulco is still linked to sun-soaked holidays, wellness, and relaxation – which ties directly to the registered services like saunas, massage, and public bathhouses.

Despite the proprietor’s appeal, the EUIPO’s Board of Appeal stood by the decision in 2023. The board acknowledged that although Acapulco's popularity as a glamorous tourism destination has faded (thanks to its crime rate), the name still conveys certain positive vibes to consumers, like wellness and relaxation. In the end, the court agreed that the trademark was too descriptive and lacked the distinctive character needed to function as a trademark.

So, what's the takeaway? If you're thinking about trademarking a place name, it’s essential to ensure that the name won't be directly linked to the services or goods you’re offering. Otherwise, you risk running into issues with descriptiveness and distinctiveness. This case serves as a reminder that place names can be tricky in the trademark world!

The image in the post is not related to the invalidated EU trademark mentioned above.