April 2012 Special Issue on Geographical Indications

The Armagh Bramley Apple:
the latest GI to receive protection
from the European Commission

The April 2012 issue of the Journal of Intellectual Property Law & Practice (JIPLP) is now available in full to online subscribers. Both subscribers and non-subscribers can check out the full list of contents (which includes contributions on topics other than GIs) here. It is a special issue with a major focus on geographical indications and the impact of the body of law which protects GIs on other areas of IP law.

The achievement in getting this issue together is a tribute to the combined efforts of the two guest editors, Miguel Ángel Medina González (Elzaburu, Spain) and Keri Johnston (Johnston & Wassenaar, Toronto). The two have managed to do this while separated by thousands of miles of ocean, several time zones and entirely different legal cultures. Both are influential members of MARQUES, a leading European trade mark organisation. Miguel Ángel, a MARQUES Council Member, is Chair of its Geographical Indications Team while Keri, who has been on the MARQUES Geographical Indications Team since 2007, is currently its Vice Chair.

The jointly-penned guest editorial for this issue reads as follows:

"The geographical factor

The “geographical factor” has evolved from a mere reference to a geographical indication of provenance of a product to that of an indicator of qualities or characteristics which reflect its geographical origin. “Geographical origin” in this context means not merely the place from which the product physically comes or where it is manufactured, but a place that has a special link with the product in question and that relates to qualities resulting from the specific soil where the product is grown, to local human factors, culture, and ways in which it is produced, processed or prepared — or to the reputation acquired because of the tradition and the special way in which the product is handled or manufactured in a certain place, which may vary from jurisdiction to jurisdiction.

Not everything that comes from a certain place may be identified by the name of that place. Sometimes it may not even be possible to make reference to a geographical name to inform consumers of the characteristics, kind or type of a certain good, if use of that geographical name is restricted because it is protected as intellectual property.

Geographical indications often seem to have a special and intimate charm; they are also said to be a tool for the economic take-off of developing countries.

Consumers seem to be increasingly attracted by goods which have specific qualities on account of their geographical origin. This has led geographical indications to collide with that other species of intellectual property that serves a function of indicating the origin of goods in the course of commerce: the trade mark. This happens particularly when the trade mark has geographical connotations or consists of a geographical name linked by the public to a product. Geographical indications and trade marks, respectively acting as indicators of a geographical origin and business origin, may create a synergy, but may also lead to conflicts around the world.

The different legal views coming from the New World and the Old (the European Union, among other countries) do not help to tone down this apparent conflict. The trade mark approach, based on the “prior rights” principle is sometimes in conflict with the approach based on the protection of geographical indications (as in Europe), which is founded to some extent on the legitimacy of territorial rights, as a sort of preferential or privileged right to a certain geographical designation that confers on geographical indications a protection that is asymmetric and stronger than that conferred on trade marks.

Generally speaking, even within jurisdictions which make special legal provision for them, geographical indications are treated very differently from country to country and do not enjoy the same high level of harmonization as do trade marks.

Specific types of trade marks (e.g. collective, certification and guarantee marks) seem more frequently to take a place on the market as a more balanced position between individual trade marks and geographical indications, as they may be allowed to benefit from the best advantages of both types of right and to obtain protection for geographical terms even in those countries where no register for geographical indications exists. Nevertheless, the ability of such marks to fulfil the functions of a geographical indication is also under discussion.

In some respects today's scenario resembles a Tower of Babel in where different terminology and different regulations, with different scopes of protection coexist, and where certain designations are strongly defended in some countries as valuable assets (or even as items of national interest), while in others they are merely generic expressions which are free to use.

Geographical indications today are a bit like guests who have been invited to lots of different parties. The WTO has been trying to push forward the delayed Doha agenda for a multilateral register in the past few months. WIPO is increasing its efforts to amend the Lisbon System (at present it is the only system for international registration of “appellations” of origin) to allow the accession of intergovernmental organizations to make it more attractive for new members. The European Union is involved in the process of clarifying the panorama in its territory and make it more user-friendly by merging regulations and harmonising procedures at the same time that it studies the extension of its protection schemes to new products and includes the protection of geographical indications in the negotiations of its many bilateral agreements with other regions all over the world. Even the ACTA negotiations have taken geographical indications into consideration. So we see that, while geographical indications are welcome, we remain uncertain as to where they belong".

Protection of geographical indications against translation, generic use, evocation, and other potential enemies

Author: Miguel Angel Medina González (Elzaburu, Madrid)

Bureau National Interprofessionnel du Cognac v Korkein hallinto-oikeus, Court of Justice of the European Union (First Chamber), joined cases C-4/10 and C-27/10, 14 July 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr182, first published online: November 29, 2011

The ECJ has confirmed the applicability of EC Regulation 110/2008 on the definition, description, presentation, labelling, and the protection of geographical indications (GIs) of spirit drinks in assessing the validity of a trade mark registration that contains a GI, even where registration took place before the regulation entered into force, and that a mark which contains a protected GI must be refused or invalidated, where its use would lead to any of the situations referred to in Article 16 of the regulation.

Legal context

Two national trade mark applications containing elements protected under GI regulations were filed in Finland. It is an accepted fact that the TRIPS regulations have been incorporated into the applicable EU regulations.

In its judgment, the court dealt mainly with questions concerning the temporal and direct applicability of certain regulations (EC Regulation 110/2008 and previous EC Regulation 1576/89 as amended by Regulation 3378/94, among others) and their compatibility with the principles of legal certainty and protection of legitimate expectations. The court also explored the prohibition of registration of trade marks containing a GI protected by EC Regulation 110/2008 or such an indication in the form of a generic term or a translation when they cover spirit drinks which do not meet the requirements set for use of the GI. Articles 14, 15, 16, and 23 were analysed.

Another topic addressed was whether such trade marks are liable to mislead the public in the way referred to in Article (1) (g) of the Trade Mark Directive (TMD)—which is the same under the current TMD (2008/95/EC) as in the previous TMD (89/104)—and whether registration of trade marks which contain elements infringing Regulation 110/2008 can be prohibited on the basis of Article 3 (2) (a) of the TMD by a Member State. This article provides that a trade mark is to be rejected or invalidated if its use can be prohibited by virtue of legislation other than the trade mark law of the Member State in question or of the Community.

Facts

The Finnish company Gust. Ranin Oy applied to register two trade marks consisting of bottle labels in Class 33. One of them, No 226350, had ‘Konjakit’ (‘Cognacs’) as its specification of goods and the other, No 226351, was for ‘liqueurs containing konjakki’.

The first included the expression COGNAC L&P HIENOA KONJAKKIA Lignell & Piispanen ‘Product of France’ ‘40%’ ‘Vol 500 ml’; and the second included ‘KAHVI-KONKAKKI Café Cognac Likööri – Likör – Liqueur’ ‘Lignell & Piispanen’ ‘21%’ ‘Vol 500 ml’.

Both trade marks were registered and subsequently opposed by the Bureau National Interprofessionel du Cognac (BNIC). The opposition was accepted against the first and rejected against the second. Appeals were filed by the applicant and the opponent. The appeal of the applicant was upheld, while that of the BNIC was dismissed. As a result, both registrations were granted, against which the BNIC appealed in the Supreme Administrative Court (‘Korkein hallinto-oikeus’), which referred certain questions to the ECJ for a preliminary ruling.

Analysis

The first question of the Finnish court refers to the applicability of EC Regulation 110/2008 in assessing the validity of a trade mark registration that contains a GI protected by the regulation, where registration took place before the regulation entered into force.

The ECJ stated that EU measures must not take effect from a point in time before their publication, but there may be clear exceptions depending on their terms or general scheme or where their purpose so demands and legitimate expectations are duly respected. The court finally concluded that Article 23 (1) of EC Regulation 110/2008 clearly makes it possible to refuse or invalidate a trade mark registered before the entry into force of the regulation.

The court added that, in the present case, there is no question as to the applicability of the TRIPS time limits, as the trade mark was not registered before 1 January 1996 or before the date of protection of the COGNAC GI, these two situations being foreseen in TRIPS.

In its second question, the Finnish court asked whether Articles 16 and 23 of EC 110/2008 preclude the registration of a mark containing a protected GI, or such an indication in the form of a generic term and translation, and which is registered for spirit drinks which do not satisfy the conditions for the use of that GI.

Regarding Article 23, the ECJ considered that, according to paragraph (1), registration of a mark which contains a GI registered in its Annex III (eg COGNAC) is to be invalidated, if its use would lead to any of the situations referred to in Article 16 of that regulation. As a result, national authorities must refuse or invalidate the registration of a mark if it is used in such circumstances and is not covered by the temporary derogation provided for in Article 23(2) of that regulation (which incorporates the temporal derogations provided by TRIPS).

As to Article 16, it considered that it refers to situations in which the marketing of a product is accompanied by a reference to a GI in circumstances liable to mislead the public as to the origin of the product or, at the very least, to set in train in the mind of the public an association of ideas regarding that origin or to enable the trader to take unfair advantage of the reputation of the GIs concerned.

The court stated that the extent of the protection must be assessed in light of the rule in Article 15(4), whereby the GI may be borne only by spirit drinks which meet all the specifications in the technical file concerning the GI and reiterated that Articles 15 (3) and 14 (2), respectively, provide that GIs cannot become generic and cannot be translated on the label or in the presentation of a spirit drink, and that this is applicable to ‘Cognac’.

Of the situations provided for in Article 16, the ECJ considered that, in relation to point (a), the ‘spirit drinks’ covered by the relevant marks were ‘comparable’ to the spirit drink covered by the GI ‘Cognac’ and therefore the marks make a ‘direct commercial use of a geographical indication in respect of products which are comparable’, but which are not covered by the GI.

As to point (b), the ECJ declared that the use of ‘Cognac’ for spirit drinks which do not meet its specifications may be categorized as an ‘evocation’.

Practical significance

A bit of light in the sometimes confusing mix of European Union regulations concerning GIs
An important question is that of the applicability of the prohibitions under EC Regulation 110/2008 (which are stronger than those in the previous Regulation 1576/89) to those trade marks already registered before the entry into force of Regulation 110/2008.

The question of which regulation may be applicable, particularly in cases of conflict between GIs and trade marks, where the applicable EU regulations have gone through amendments after a certain trade mark and a certain GI were protected, seemed to be open to discussion. This is particularly true in the case of wines, where amendments have been particularly frequent and sometimes it is even difficult to know exactly which rule was in force at a certain time. This decision points in a certain direction which could be a guideline for future cases and other products, like wines.

A bit of shadow over the concept of ‘evocation’
The ECJ has made reference to the concept ‘evocation’ in previous judgments, including for example Case C-87/97 Cambozola v Gorzonzola or C-132/05 Parmesan, and provided as an illustration a situation where the image triggered in the mind of the consumer by the new trade mark incorporating part of the protected designation was that of the product whose designation was protected. It is rather shocking that the court now mentions as ‘evocation’ a situation where the trade mark does not include a part of the protected designation as used to be the case (eg Cambozola or Parmesan), but the expression ‘Cognac’ as such (Paragraph 58 ‘… Cognac for spirit drinks which do not meet the relevant specifications may therefore be categorised as an evocation’).

Other aspects of interest
The ECJ also referred to the non-generic nature of protected GIs and to the prohibition of translations.

The fact that the specifications of goods covered by Trade Mark No 226350 are ‘Cognacs’ may seem to be a generic use and suggest no intention to make the products comply with the specifications of use of the GI. The situation is clearer in the case of Trade Mark No 226351 for ‘liquors containing konjakki’, which then are not ‘Cognac’.

The decision also appears to conclude that a protected GI cannot be translated.

Bavaria and Bayerisches Bier may co-exist

Authors: Paul Reeskamp and Eva den Ouden (Allen & Overy LLP, Amsterdam)

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpp180

Bavaria NV and Bavaria Italia Srl v Bayerischer Brauerbund eV, Case C-343/07, Court of Justice of the European Communities, 2 July 2009

Bavaria NV is allowed to use its pre-existing trade marks containing the element ‘Bavaria’ and co-exist with the geographical indication ‘Bayerisches Bier’, provided that those trade marks do not infringe the geographical indication, are registered in good faith and are not subject to any grounds of invalidity or revocation provided for by harmonized European trade mark law.

Legal Context

On 14 July 1992, the European Commission adopted Council Regulation 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (the ‘GI Regulation’). To be protected under this regulation, an agricultural product or foodstuff must comply with certain specifications as specified in Article 4, evidence that the agricultural product originated in the geographical area details bearing out the link with the geographical environment etc. According to the simplified procedure of Article 17, Member States should have notified the commission, within 6 months of the entry into force of that Regulation, which of their legally protected names or, in those Member States where there is no protection system, which of their names established by usage, they wish to register under that Regulation.

The German authorities notified the name ‘Bayerisches Bier’ within the stated time limit. This name was also already protected through bilateral agreements between Germany, France, Spain, Italy, and Greece. The Commission subsequently adopted Council Regulation 1347/2001 (the ‘Bayerisches Bier Regulation’) as an annex to the GI Regulation to conclude that ‘Bayerisches Bier’ should be protected as a geographical indication in accordance with the GI Regulation.

The main question in the proceedings between Bavaria NV and Bayerisches Brauerbund (BB) was whether Bavaria was allowed to use the pre-existing trade mark BAVARIA, or pre-existing trade marks containing the element ‘Bavaria’, taking into account that the name ‘Bayerisches Bier’ is a protected geographical indication (‘PGI’) under the GI Regulation.

Facts and Analysis

BB, a German association, had the objective of protecting the common interests of Bavarian brewers. Its statutes dated from 1917; since 1968, it was the proprietor of the registered trade marks BAYERISCH BIER and BAYERISCHES BIER.

Bavaria NV, a Dutch brewing company operating on the international market, began using the name ‘Bavaria’ in 1925; that word became part of its name in 1930. Bavaria owned several trade marks containing the element ‘Bavaria’ (‘the Bavaria trade marks’). Bavaria Italia, also a party to this proceeding, was part of the Bavaria group (Bavaria NV and Bavaria Italia are referred to as ‘Bavaria’).

After the German authorities informed the Commission of the application to have ‘Bayerisches Bier’ protected as a geographical indication, a number of Member States filed an objection, specifically with regard to the pre-existence of trade marks including the term ‘Bayerisches Bier’ or translations of it, and expressing the opinion that the term ‘Bayerisches Bier’ or its translations had become generic. After investigation, the Commission concluded that these arguments were unfounded and adopted the Bayerisches Bier Regulation. Bavaria did not bring an action against this regulation.

Subsequently, BB brought an action before the District court in Turin, to stop Bavaria using the Bavaria trade marks. BB sought an interlocutory injunction declaring those marks invalid or revoking them, on the ground that they infringed the PGI ‘Bayerisches Bier’. BB considered that Bavaria misled the public since the Bavaria trade marks contained a geographical indication referring to Bayerisches beer while the Bavaria beer itself was Dutch. The District Court partly granted the action of BB against Bavaria. Bavaria appealed against this judgment. The Court of Appeal referred two questions for preliminary ruling to the European Court of Justice (ECJ).

First question

Is the Bayerisches Bier Regulation invalid, possibly as a consequence of the invalidity of other acts, in the light of a possible breach of general principles, a failure to comply with procedural requirements or a failure to comply with substantive requirements?

With regard to the first question, the ECJ considered that no factor was disclosed which affected the validity of the Bayerisches Bier Regulation. Two issues arising are, however, worth mentioning.

In this context, the issue was raised whether the term ‘Bayerisches’ had become generic. Only if the link between the reputation of Bavarian beer and its geographical origin had disappeared could this be the case, said the ECJ: the mere presence on the market of trade marks including the word ‘Bayerisches’ did not automatically mean this link had disappeared.

Secondly, based on Article 14(3) GI Regulation Bavaria is of the opinion that the PGI ‘Bayerisches Bier’ should not have been registered since their Bavaria trade marks are well known and have been used for a long time. According to Bavaria, the PGI ‘Bayerisches Bier’ is therefore liable to mislead consumers as to the true identity of the products. According to BB and as considered by the ECJ, a situation like this does not exist.

Second question

2. As an alternative, if question (1) is held inadmissible or unfounded, should the Bayerisches Bier Regulation be construed as meaning that recognition of the PGI ‘Bayerisches Bier’ is to have no adverse effect on the validity or usability of pre-existing marks of third parties in which the word ‘Bavaria’ appears?

The consideration of the ECJ with regard to this question is closely related to the first. The ECJ focused on the comparison between Articles 14(2) and 14(3) GI Regulation. Article 14 sets out, among other things, general rules of conflict with regard to the relationship between registered geographical indications and trade marks. Article 14(2) refers to a situation of conflict between a PGI and a pre-existing trade mark, while Article 14(3) governs the situation where registration of a geographical indication would be liable to mislead the consumer as to the true identity of the product, in the light of the reputation of a pre-existing trade mark. According to the ECJ, Articles 14(2) and 14(3) govern separate situations. The fact that there is no likelihood of confusion on the part of the consumer and Article 14(3) is therefore not applicable (as is the case here) will not affect the need to examine the conditions in Article 14(2) that make it possible for a trade mark and a geographical indication to ‘co-exist’.

According to the ECJ, to determine whether a situation of conflict between a PGI and a pre-existing trade mark exists, a national court should analyse:

* whether the use of the trade mark corresponds to one of the situations referred to in Article 13 GI Regulation;
* whether the trade mark was registered in bad faith before the date on which the application for registration of the name was lodged; and, if appropriate
* whether there are grounds for invalidity or revocation of the trade mark as provided for, respectively, by Articles 3(1)(c) and (g) and 12(2)(b) of Trade Mark Directive 89/104.

In summary, the ECJ concludes that the fact that ‘Bayerisches Bier’ is protected as a geographical indication does not adversely affect the validity and the possibility of using pre-existing trade marks of third parties in which the element ‘Bavaria’ appears and which were registered in good faith before the date of the application for registration as a geographical indication, provided that the trade marks are not subject to any grounds of invalidity or revocation under harmonized European trade mark law. It is for the national courts to decide whether such a situation exists.

Practical Significance

This decision is of practical significance in two ways. First, by making clear that the registered geographical indication ‘Bayerisches Bier’ and the pre-existing Bavaria trade marks may co-exist, provided that the use of these trade marks does not correspond to any of the situations referred to in Article 13 GI Regulation, they are registered in good faith and are not subject to any ground of invalidity or revocation under harmonized European trade mark law. In summary, only when BB is able to show that one of these situations exists should the national courts declare the Bavaria trade marks invalid. The outcome of this case is satisfactory. It is undesirable if a trade mark such as Bavaria, which has been successfully used for such a long time, could be easily put aside when the term ‘Bayerisches’ is suddenly protected as a geographical indication.

The explanation of Article 14(2) GI Regulation is in line with Article 24.5(b) TRIPS, which provides that a trade mark consisting of a geographical indication is valid as long as it was registered before the geographical name was protected in its country of origin. Although this article of TRIPS has been subject to discussion with regard to the question whether it incorporates ‘co-existence’, the ECJ's decision is a step in the right direction. Co-existence of pre-existing trade marks and geographical indications is, in principal, possible, though subject to the interpretation of the circumstances of the case.

Secondly, this decision clarifies that the mere presence of trade marks including a geographical indication will not automatically provide that a geographical indication becomes generic. A geographical name only becomes generic if the direct link between the geographical origin and a specific quality of the product (eg its reputation) has disappeared, and the name does no more than describe a style or type of product.