Author: Miguel Angel Medina González (Elzaburu, Madrid)
Abadía Retuerta, S.A. v OHIM, General Court of the European Union (Third Chamber), Case T-237/08, 11 May 2010
Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpq107
The General Court confirms the decision in which OHIM rejected a Community trade mark (CTM) application for CUVÉE PALOMAR for wines, for conflicting with the legal protection of the registered designation of origin (RDO) ‘Valencia’ for wines, which extends itself to the locality ‘El Palomar’ in the area covered by that RDO.
The case deals with three different levels of protection of geographical indications (GIs): international, Community and national.
Community and National levels are the most relevant, as the International level concerns the TRIPs Agreement, the applicability of which is assured by means of the Community legislation, which has been amended to comply with it.
At Community level two Regulations were considered. The first is Council Regulation 40/94 (now 207/2009) on the Community trade mark, art. 7(1)(j), prohibiting registration of CTMs for wines which contain or consist of a geographical indication identifying wines with respect to such wines not having that origin. The second is Council Regulation 1493/1999 on the common organisation of the market in wine, arts 47 (2)(e), 50(1) and (2), 52 (1) and 54. The latter regulation establishes that, if a Member State uses the name of a specified region to designate a quality wine produced in specified regions (‘quality wine psr’), that name may not be used to designate products of the wine sector not produced in that region and/or products not designated by the name in accordance with the provisions of the relevant Community and national rules. Article 54 states that Member States shall forward to the Commission the list of quality wines psr which they have recognised, stating, for each of these quality wines psr, details of the national provisions governing the production and manufacture of those quality wines psr, being this list published in the Official Journal.
Finally at national level, there is a new regulation on the RDO ‘Valencia’, ratified by Ministerial Order of 2000, arts 2(1) and (2), and the version amended by Ministerial Order APA/1815/2002 of 2002, Article 4(1). Article 2 provides that the protection of the RDO ‘Valencia’ covers the expression ‘Valencia’ and all names of the sub-regions, districts, local administrative areas, localities and estates which comprise the production and ageing areas referred to in Article 4. It also prohibits the use for other wines of the names, marks, words, expressions and signs which may, by their phonetic or graphical similarity with those protected by the RDO, be confused with those wines. Article 4 expressly mentions ‘El Palomar’.
The CTM application for CUVÉE PALOMAR was filed in 2006. The OHIM rejected it on the basis of art. 7(1)(j) CTM regulation 40/94. The applicant's appeal was rejected by the Board of Appeal, which stressed that the prohibition on registering such a term is absolute and unconditional, since it is not subject to the condition of causing deception as to the place of origin. The Board stressed the fact that ‘El Palomar’ constitutes an area of production protected by the RDO ‘Valencia’, which can create confusion with the expression ‘Palomar’ in the trade mark applied for, as the goods do not have their origin in that locality. The restriction of the description to ‘wines from an estate known as Pago Palomar, situated in the local administrative area of Sardón de Duero (Valladolid, Spain)’ does not overcome the objection. Neither did the fact that the applicant owned very similar trade marks which included the expression PALOMAR.
The applicant appealed to the General Court, putting forward a single plea in support of its appeal, in essence, that art. 7(1)(j) must be construed in a restrictive manner.
After some linguistic lucubration, the Court made a careful and detailed analysis of the regulation of geographical designations of the wines applicable to the case.
The Court considered that the concept of geographical indications identifying wines for this purpose must be read in the light of the relevant provision of Community Law (Regulation 1493/1999), according to which it is for the Member States to determine, for their respective territories, the geographical indications which are intended to be protected, which leads us to the New Regulation on the RDO ‘Valencia’.
As a result, the Court concluded that ‘the name el Palomar is a geographical indication for a quality wine psr’ and ‘therefore constitutes a geographical indication within the meaning of art. 7(1)(j) of Regulation 40/94’. The fact that the name ‘El Palomar’ is not expressly mentioned in the list of quality wines psr published in the EC Official Journal is not relevant, since those lists are published in the Journal's C Series for information purposes while the regulation governing the RDO was published in the national (Spanish) Official Journal, which is what was decisive.
The only obligation for Member States was to forward the list of quality wines psr which they recognised to the Commission and to state, for each of them, details of the governing national provisions for publication by the Commission.
Even if the trade mark applied for has several meanings or does not exactly match the expression ‘El Palomar’, this does not rule out the application of art. 7(1)(j). It would only be otherwise if the geographical indication consisted of a name of a place containing an article which is inseparable from that name and which gives that name its own, autonomous meaning.
Like the Moon, the land protected by geographical indications down on planet Earth may also have a dark side, at least in legal terms. This could be a possible view of what has been ‘disclosed’ by the decision analysed here. Possibly its main significance is to call our attention to the dangers faced by trade mark owners and all those who intervene in the market if clear regulations on GIs are not adopted. Two questions stand out:
Protection of what could be called ‘hidden names’ or ‘hidden GIs’ (those protected names which have not been published in the lists of quality wines psr, but which are considered as such)
Their protection derives from national regulation (eg a Spanish Ministerial Order) which regulates a specific and different designation of origin (here the RDO ‘Valencia’), which is considered to give legal cover to those other designations (eg Palomar) which are not expressly published in the EU's Official Journal. These ‘hidden names’ do not necessarily bear any resemblance to the designation of origin published in the Official Journal. Likewise the national regulation is also not published at the Community level (nor evidently, are there any official translations to other languages), there being only a reference to it.
The interpretation of the Court seriously weakens legal certainty in the market. The Court itself stated that, although the publication by the Commission complies with EU law, it ‘hardly seems effective to ensure that the public is fully and completely informed’ as to the name of the local administrative areas which benefit from an indication of origin. If this decision becomes final, it would confirm that entrepreneurs could be unexpectedly infringing geographical indications by using or applying for signs which consist of names which do not have any similarity to a designation of origin, but only with any of those ‘hidden names’. On the other hand, it would be unsurprising to find ‘hidden names’ protected under certain RDOs which conflict with each other.
Protection as GIs of expressions which have several meanings (polysemy)
These expressions are likely to be found frequently, even in cases where the names are common or might even be related in some manner to specific products or to the place where such goods are usually produced independently of the specific geographical name. Palomar is a common name (‘dovecote’) and is likely to be found as part of other villages' names. The Court's ruling that the protection of GIs is absolute in these cases can lead to conflict.
Now that new EU regulations for wine have been adopted, under which new wine GIs will be registered through a Community procedure, it is to be expected that the Commission takes measures to ensure that there is sufficient publicity for all the protected names so that interested parties have the opportunity to oppose and be aware of the existence of all the names which are going to be protected in order to avoid facing a possible infringement claim.
This also means that extreme care is called for when carrying out clearance searches for signs for wines.
Finally, art. 2(1) of the regulation of the RDO ‘Valencia’ was amended on 20 April 2010 to state that the protection extends itself to the expression ‘Valencia’, but it does not expressly state that it is extended to other names, as it did before. Let us see whether this deters the appellant from appealing this decision to the Court of Justice.