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.

No comments:

Post a Comment