The delicious San Marzano plum tomato at the heart of a trademark dispute

The best tomato for a homemade pasta sauce? Personally, we think it is hard to beat Mutti’s canned tomatoes, particularly the San Marzano plum tomato.

Let them simmer gently for a good long while and you end up with a wonderfully sweet sauce. A fitting opening for a blog about good food and cooking, but also for a trademark blog.

The San Marzano plum tomato (Pomodoro San Marzano dell’Agro Sarnese-Nocerino), originating from Campania in Italy, is protected by a European protected designation of origin, or PDO. This quality label guarantees that production and processing take place within a specific geographical area and in accordance with recognised know-how. Other well-known examples include feta, Prosciutto di Parma, and Champagne.

A German company recently applied to register the figurative mark SAN MARZANO No. 2, featuring an image of a tomato, as a European Union trademark. The application covered tomato products and tomato sauces, but also clothing, bags, and accessories.

For the tomato products, the application was refused. According to the European Union Intellectual Property Office (EUIPO), the public will understand SAN MARZANO as a reference to the well-known tomato variety and No. 2 as an indication of size or grading. The image of tomatoes also adds insufficient distinctive character; in our view, it merely reinforces the descriptive nature of the sign. The sign therefore primarily describes what is inside the packaging and cannot function as a trademark for those products.

The consortium behind the protected designation of origin opposed the application for the remaining goods, including bags, clothing and footwear. According to the consortium, the link with the protected San Marzano tomatoes was evident and the German company would benefit from the reputation of the PDO.

Protection afforded by a PDO can indeed extend beyond the product for which it is protected, in this case tomatoes. This requires either that the trademark is used for comparable products or that it takes unfair advantage of the reputation of the PDO. According to the EUIPO, the goods at issue were not comparable: clothing and leather goods are far removed from tomatoes. In addition, the consortium had submitted no evidence of reputation, so the EUIPO found no basis for relying on that criterion.

The opposition was therefore dismissed. The mark fails for tomato products because it is descriptive for those goods, but it may proceed for, among other things, bags, clothing, and footwear. A protected designation of origin therefore offers broad protection, but not an exclusive right to every element of the name for every conceivable product.

Author: Arnaud Bos

Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.