AAAML X International Congress 2013 Edith Van den Eede Italian and European trademark attorney THE PROTECTION OF GEOGRAPHICAL INDICATIONS IN THE EU: scope

AAAML X International Congress 2013

Edith Van den EedeItalian and European trademark attorney

THE PROTECTION OF THE PROTECTION OF GEOGRAPHICAL GEOGRAPHICAL

INDICATIONS IN THE EU: INDICATIONS IN THE EU: scope of protection and scope of protection and

relationship between relationship between trademarks and GIstrademarks and GIs

Asociación Antiguos Alumnos de Magíster Lucentinvs Parma, Italy15 March

2013

TOPICS

I. GIs versus Trademarks II. Relationship between GIs and Trademarks

III. Concluding remarks

I. Geographical Indications versus

Trademarks

1. Setting the scene: key concepts

2. Protection of GIs and TMs in the

EU

Examples

GI (P.D.O.): Collective mark:

Individual mark:

PARMIGIANO REGGIANO CONSORZIO

DEL FORMAGGIO

PARMIGIANO

REGGIANO (word)


Trademarks

1. Setting the scene:

key concepts and differences

I. GIs versus Trademarks: 1.

Setting the sceneGEOGRAPHICAL

INDICATIONS (PDO/PGI)TRADEMARKS

Definition Geographical origin (link) Entrepreneurial origin*

Objective Protection of consumers and producers

Distinguishing products/services

Required characteristic

Historical (social and cultural) recognition

New (available)

Application scope Products originating in geographical area

Products or services

Ownership of right Co-ownership/groups Individual

“Official” controls Yes No

Need to be renewed No Yes

Registration/renewal fee

No Yes

Transfer possibility No Assignment /Licence

Possibility to become generic

No Yes

Type of right Exclusive right Exclusive right

Limitation of the effects

No yes

Enforcement Private and/or public Private

*Collective/certification trademark: purpose of guaranteeing the origin/quality/nature of the goods or services belonging to the particular

association

I.Geographical Indications versus

Trademarks

2. Protection of GIs and Trademarks

in the EU


Trademarks

2. Protection of GIs and Trademarks in

the EU Defence against counterfeiting:

TMs (including collective TMs): comparison

between signs and between products, likelihood of

confusion

GIs: certain situations prohibited under GI

Regulation (beyond the likelihood of confusion),

comparison between products:


Trademarks


the EU

Court of Justice , Case C-87/97 of 4 March

1999 (§ 26): GORGONZOLA PDO versus

CAMBOZOLA trademark

“It is possible [..] for a protected designation to be evoked where there is no likelihood of confusion between the products concerned [..]”


Trademarks


the EU

TMs (including collective TMs): limitations of

effects provided for: « descriptive use defence »

(legitimate use by a 3rd party, in trade, of a sign identical or similar to a trademark ̶ indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods, or other characteristics of the goods ̶ if in accordance with honest practices)

GIs: no limitations provided for

II. Relationship between GIs and Trademarks

1. Scenario where the GI will prevail

2. Coexistence scenario

3. Scenario where the trademark will prevail


1. Scenario where the GI will prevail : A. Legal

framework

Article 14 (1) (1° subparagraph) Regulation (EU) No.

1151/2012:

If a PDO or a PGI is registered under this Regulation, the registration of a trade mark must be refused where:

- the use of the mark would contravene Article 13 (1) Reg. No.

1151/2012,

- the mark relates to a product of the same type,

- the trade mark application is submitted after the date of

submission of the PDO/PGI registration application to the

Commission.

Article 14 (1) (2nd subparagraph) Regulation (EU) No.

1151/2012:

Trademarks registered in breach of the first subparagraph shall be

invalidated.


1. Scenario where the GI will prevail : A.

Legal framework

Transitional provisions

Article 16 (3) Regulation (EU) No. 1151/2012:

“This Regulation shall apply without prejudice to any right of coexistence recognized under Regulation (EC) No 510/2006 in respect of designations of origin and geographical indications, on the one hand, and trademarks, on the other”.

II. Relationship between GIs and Trademarks : Legal framework

Article 13 (1) Regulation (EU) No. 1151/2012:

Registered names shall be protected against: (a)any direct or indirect commercial use of a registered name in respect of products not covered by the registration where those products are comparable to the products registered under that name or where using the name exploits the reputation of the protected name, including when those products are used as an ingredient;

(b) any misuse, imitation or evocation, even if the true origin of the products or services is indicated or if the protected name is translated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’ or similar, including when those products are used as an ingredient;

(c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product that is used on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin;

(d) any other practice liable to mislead the consumer as to the true origin of the product.

II. Relationship between GIs and

Trademarks

1. Legal framework

Articles 164 and 7(1)(k) Regulation (EU) No. 207/09 («CTMR»):

« The CTMR shall not affect the PDO/PGI Regulation and in

particular Article 14 thereof. »

« Trademarks which contain or consist of a designation of origin or a geographical indication registered under the PDO/PGI Regulation , shall not be registered when they corresponds to one of the situations covered by Article 13 of the said Regulation and regarding the same type of product , on the condition that the application has been submitted after the PDO/PGI filing date with the Commission »

- Article 170 (2) Italian IP Code:

« With reference to trademark applications for agricultural and primary agricultural products and foodstuffs containing geographical names , the Italian PTO transmits a copy of the mark and any other documentation to the Ministry of Agriculture that expresses its opinion within 10 days from the receipt of the request. »


1. Scenario where the GI will prevail : B. Relevant case law

General Court Case T-291/03 of 12 September 2007:

The existence of the GRANA PADANO PDO precludes the registration of GRANA BIRAGHI (word) as a CTM for class 29 goods (‘cheese, in particular cheese from cows’ milk, mature cheese, hard cheese, whole cheeses, portions of cheese with or without rind, packaged cheese of various sizes, grated and packaged cheese’).

“It follows that OHIM is bound to apply the CTMR in such a way as not to affect the protection granted to PDOs by Regulation No 2081/92. Consequently, OHIM must refuse to register any mark which is covered by one of the situations described in Article 13 of Regulation No 2081/92 and, if the mark has already been registered, must declare that registration to be invalid” (§55/56)

Court of Justice Joined Cases C-4/10&C-27/10 of 14 July 2011:The use of a mark containing the element COGNAC for spirit drinks which do not meet the relevant specifications may be categorized as an ‘evocation’ for the purposes of Article 16(b) of Regulation No. 110/2008. => The registration of a mark containing a geographical indication, or a term corresponding to that indication and its translation, with respect to spirit drinks which do not meet the specifications set for that indication, must be refused or invalidated. Wide scope of ‘comparable products’: “regardless of their various categories, ‘spirit drinks’ covers drinks which have common objective characteristics and which are consumed, from the point of view of the relevant public, on occasions which are largely identical. Furthermore, they are frequently distributed through the same channels and subject to similar marketing rules.” (par. 54)



General Court in Case T-237/08 of 11 May 2010:

The existence of ‘el Palomar’ (name of a local

administrative area in Spain, in the sub-region Clariano, included in the area

of production Protected by the registered designation of origin

VALENCIA)precludes the registration of CUVEE PALOMAR

(word) as a CTM for wine.



OHIM Cancellation Division decision of 6 October 2004in Case 609C703884/1

Invalidation of the trademark RONCARIFORT (word) registered for (amongst others) ‘cheese’ on the basis of the earlier ROQUEFORT PDO (invalidation for all products/services claimed)

OHIM Opposition Division decision of 7 December 2010in Case B001496275

Rejection of the trademark DANAZOLA (word) filed for (amongst others) ‘dairy products’ on the basis of the earlier GORGONZOLA PDO



OHIM Opposition Division decision of 27 January 2011in Case B001354689

Rejection of the trademark CASTELLON CLEMENTINES (figurative) filed for products in classes 31 and 32, and services in class 35, on the basis of the earlier CITRICOS VALENCIANOS PGI

OHIM Board of Appeal decision of 26 October 2012in Case R1731/2012-2

Rejection of the trademark CAZORLIVA (figurative) filed for (amongst others) ‘olive oil’ in class 29 and related services in class 35 on the basis of the earlier SIERRA DE CAZORLA PDO


2. Coexistence scenario : A. Legal framework Article 14 (2) (1° subparagraph) Regulation (EU) No.

1151/2012:

Despite the registration of a PDO/PGI , a trademark the use of which contravenes Article 13(1), may continue to be used and renewed for that product if:

- Applied for, registered (or established by use if that possibility

is provided for by the legislation concerned) in good faith

within the EU territory, before the PDO/PGI application date

with the Commission,

- Provided that no grounds for its invalidity or revocation exist

under the CTMR or under Directive 2008/95/EC ( « TM

Directive » )

« In such cases, the use of the PDO or PGI shall be permitted

as well as use of the relevant

trademarks »


2. Coexistence scenario : B. Relevant case law

Court of Justice Case C-120/08 of 22 December 2010:

Article 14(1) of Regulation No. 2081/92 is applicable for resolving the conflict between a name validly registered as a PGI in accordance with the simplified procedure under Article 17 of that regulation and a trademark corresponding to one of the situations referred to in Article 13 relating to the same type of product, the application for registration of which was submitted both before the registration of that name and before the entry into force of Regulation No. 692/2003 modifying Regulation No. 2081/92.

The date of the entry into force of the registration of that name constitutes the reference date for the purposes of Article 14(1).

II. Relationship between GIs and Trademarks 2. Coexistence scenario :

B. Relevant case law

Court of Justice Case C-343/07 of 2 July 2009:

Article 14(2) implies that there must be an analysis, intended inter alia for the

authorities and courts called upon to apply the provisions in question, after

registration.

That analysis thus calls for an examination of the facts and of national,

Community or international law, which it is for the national court alone to carry

out, if necessary making a reference for a preliminary ruling under Art. 234 EC

Corte di Cassazione Case 15958 of 20 September 2012:

Final instance decision of the Italian Supreme Court confirming the Turin

Appeal Court decision allowing co-existence of Bayerisches Bier PGI with the

Dutch BAVARIA branded beer

II. Relationship between GIs and Trademarks3. Scenario where the trademark will prevail: A. Legal framework

Article 6(4) Regulation (EU) No. 1151/2012:

A name proposed for registration as a designation of origin or geographical

indication shall not be registered where:

- in light of a trademark’s reputation and renown,- and the length of time it has been used, - registration of the name proposed as the designation

of origin or geographical indication , could be liable to mislead the consumer as to the true identity of the product.

II. Relationship between GIs and Trademarks3. Scenario where the trademark will prevail: B.

Relevant case law

Corte di Cassazione Case 15958 of 20 September 2012:

Third requirement missing (lack of deception)

III. Concluding remarks

GRAZIE !!

Edith Van den Eede

Italian and European Trademark Attorney

E-mail: [email protected]

Phone: +39 06 397 499 85

Documents

AAAML X International Congress 2013 Edith Van den Eede Italian and European trademark attorney THE PROTECTION OF GEOGRAPHICAL INDICATIONS IN THE EU: scope