THE PROTECTION OF GEOGRAPHICAL INDICATIONS IN THE EU: scope of protection and relationship between trademarks and GIs

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THE PROTECTION OF GEOGRAPHICAL INDICATIONS IN
THE EU scope of protection and relationship
between trademarks and GIs
AAAML X International Congress 2013
Edith Van den Eede Italian and European trademark
attorney
Asociación Antiguos Alumnos de
Magíster Lucentinvs Parma, Italy15 March 2013
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• TOPICS
• I. GIs versus Trademarks
• II. Relationship between GIs and Trademarks
• III. Concluding remarks

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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)
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• I. Geographical Indications versus Trademarks
• 1. Setting the scene
• key concepts and differences

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• I. GIs versus Trademarks 1. Setting the scene

GEOGRAPHICAL 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
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• Geographical Indications versus Trademarks
• 2. Protection of GIs and Trademarks in the
  EU

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• Geographical Indications versus 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

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• Geographical Indications versus Trademarks
• 2. Protection of GIs and Trademarks in 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 ..

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• Geographical Indications versus Trademarks
• 2. Protection of GIs and Trademarks in 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

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II. Relationship between GIs and
Trademarks 1. Scenario where the GI will
prevail 2. Coexistence scenario 3. Scenario
where the trademark will prevail
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• II. Relationship between GIs and Trademarks
• 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.

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• II. Relationship between GIs and Trademarks
• 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.

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• II. Relationship between GIs and Trademarks
  Legal framework
• Article 13 (1) Regulation (EU) No. 1151/2012
• Registered names shall be protected against
• 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.

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• 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.

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• II. Relationship between GIs and Trademarks
• 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)

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• Court of Justice Joined Cases C-4/10C-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.
•  
• gt 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)
•  
•  

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• II. Relationship between GIs and Trademarks
• 1. Scenario where the GI will prevail B.
  Relevant case law
• 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.

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• II. Relationship between GIs and Trademarks
• 1. Scenario where the GI will prevail B.
  Relevant case law
• OHIM Cancellation Division decision of 6 October
  2004
• in 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
  2010
• in Case B001496275
• Rejection of the trademark DANAZOLA (word) filed
  for (amongst others) dairy products on the
  basis of the earlier GORGONZOLA PDO

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• II. Relationship between GIs and Trademarks
• 1. Scenario where the GI will prevail B.
  Relevant case law
• OHIM Opposition Division decision of 27 January
  2011
• in 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 2012
• in 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

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• II. Relationship between GIs and Trademarks
• 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

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• II. Relationship between GIs and 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).

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• 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

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• II. Relationship between GIs and Trademarks
• 2. Coexistence scenario
• Commission Regulation No. 32/2010 of 14 January
  2010 entering a name in the PDO/PGI register  
• - Czech Republic application to register the name
  Jihoceská Zlatá Niva
• - Objection by Slovakia on the basis that
  registration of the name would jeopardize the
  existence of prior trademarks registered  in
  Slovakia.
• - No sufficient evidence that registration of the
  name would be liable to mislead consumers as to
  the true identity of the product no evidence on
  the degree of distinctiveness of the mark due to
  its reputation, renown and length of time it was
  used (only evidence that the name can be
  associated with a name NIVA)
• - The NIVA term was used in a generic way.

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• II. Relationship between GIs and Trademarks
• 2. Coexistence scenario
• Tribunal Superior de Justicia Madrid in Case No.
  1519/2012 of 8 November 2012 and Case No.
  1582/2012 of 15 November 2012
• Invalidating the previous decisions of the
  Spanish PTO to refuse the registration of
  LAMBRUSCO ANTICO CASATO (figurative) and
  LAMBRUSCO DELLEMILIA CANOTTIERI (figurative) for
  Lambrusco wine in class 33
• LAMBRUSCO is generic (vine, species of grape),
  registered PDOs being Lambrusco Grasparossa di
  Castelvetro, Lambrusco Mantovano, Lambrusco
  Salamino di Santa Croce and Lambrusco di
  Sorbara

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• II. Relationship between GIs and Trademarks
• 3. 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 trademarks 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.

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• II. Relationship between GIs and Trademarks
• 3. 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)

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III. Concluding remarks GRAZIE !! Edith Van
den Eede Italian and European Trademark Attorney
E-mail Edith.VandenEede_at_praxi-ip.com Phone 39
06 397 499 85