Border Measures book: special offer to jiplp blog readers

JIPLP contributor Olivier Vrins and editorial board member Marius Schneider have edited the second edition of their encyclopaedic Enforcement of Intellectual Property Rights through Border Measures: Law and Practice in the EU, to which JIPLP editor Jeremy Phillips has also contributed a chapter. With getting on for 1,200 pages, this weighty tome is expected to be on sale during the first half of next year.

 According to the publishers, Oxford University Press (OUP),
" ... Providing a practical analysis of anti-counterfeiting and anti-piracy measures at the borders of the European Union, this book deals with all aspects of border measures under Regulation (EC) 1383/2003. It includes a thorough description of the implementation of the regime and also looks at areas of national law, giving a coherent and comprehensive overview of the application of the border measures regime within the European Union.

Fully updated in the second edition to include the two more recent Member States of Bulgaria and Romania, the work provides important guidance for intellectual property rights-holders on the practical application of border measures in these two Member States. Coverage of the legislation and guidance is also updated to include commentary on Commission Regulation 1172/2007, which created a new application for action form for the applications based on a "Community right", as well as the DG TAXUD manual for filing applications for action under Regulation 1381/2003. Updates to case law include important recent decisions in relation to goods in transit, sanctions against traffickers when a case has been settled under the simplified procedure, Community applications for action, and the ECJ's Advocate-General's opinion on the use of information provided to an intellectual property rights-holder during a border seizure of goods.This second edition also considers the UK HMRC's fundamental changes to its detention and seizure procedures in respect of goods infringing trade mark and copyright.

New material includes a new stakeholder mapping section explaining the respective roles of the many international organisations that are active in the enforcement of intellectual property rights such as WIPO, WCO, WHO, OLAF, EUROPOL, and INTERPOL as well as a new chapter on organized crime in light of its increasing occurrence within counterfeiting networks".
This work is priced at £225. However, OUP is offering a 20% discount to readers of the jiplp weblog as well as to those attending the forthcoming JIPLP seminar on Fakes in Transit (details here).  To avail yourself of the 20% discount, quote promotion code ALSCHN11 if ordering directly by phone to +44 (0) 1536 452640 or via the book's web page at

JIPLP goes green for 2012

For 2012, JIPLP's cover
colour is this very
distinguished green
The January 2012 issue of the Journal of Intellectual Property Law and Practice (JIPLP) is now available in full online. Subscribers to the online version of the journal can read it in full; everyone can read the contents here -- and access to individual features can be purchased on a pay-per-view basis. The editorial for this issue can be read in full here:
"Open minds, open innovation 
Not so many years ago, the term “open innovation” was unknown to the intellectual property community. While the concept existed, there was little evidence that it existed, or that it was likely to gain any currency at all, before the publication in 2003 of Henry Chesburgh's Open Innovation: The new imperative for creating and profiting from technology. Since then, the term has gained momentum in common parlance. However it is only in the past year or two that open innovation is becoming something that is more widely and positively spoken of as something which a business might participate in, rather than as something rather strange and risky, to be indulged in by others — preferably in North America and the Asia-Pacific.

What exactly is open innovation? According to Henry Chesburgh, it is a paradigm that assumes that businesses both can and should use external ideas as well as internal ideas, and internal and external paths to market, when seeking to advance their technology. Since the boundaries between a business and its environment have become more permeable, it is increasingly for innovations to flow both inwards and outwards. In a world of widely distributed knowledge, no-one can afford to rely entirely on their own research: it makes better sense to buy or take a licence from other companies. In terms of outward flow, internal innovations which a business owns but doesn't use should be licensed out or shared through joint ventures or spin-offs.

As a way of doing things, this is not exactly rocket science and has been around for a long time. However, in the past this approach has generally been Plan B, when the preferred option of growing, protecting and monopolising one's own innovation needs to the point of self-sufficiency could not be achieved. The importance of Chesburgh's contribution is in the paradigm shift in corporate thinking: open innovation is portrayed as Plan A, the ideal option which both reduces R&D costs and focuses them more efficiently, which leads to improved quality and more consumer choice, and which is not merely open in the inward-outward sense but which encourages greater transparency of licensed technology itself.

It seems to me that one of the most interesting potential effects of open innovation is to shift the balance of importance as between different intellectual property rights. A closed innovation model places the greatest emphasis upon control of intellectual assets by a single proprietor: the exclusionary role of patents for inventions and, to a lesser extent, statutory design monopolies, are valuable tools for achieving this end, as is the role played by contract and general legal principles regarding the protection of trade secrets such as manufacturing know-how. With control of a market secured by such means, the role of the trade mark is relatively small. This is because a trade mark is not generally capable of excluding a product or a technology from the market: all it can do is to prevent its commercial exploitation under a particular name or origin-identifier.

Once open innovation is practised, the inevitable consensual sharing of technology diminishes the importance of the most exclusionary monopoly rights. Given the typical effects of open innovation such as the development of products and processes for an entire market rather than for a specific manufacturer, competing products will increasingly use the same parts and accessories, will operate in the same manner and will therefore decreasingly compete in terms of proprietary features which are difficult for the consumer to compare. At this point, the trade mark assumes a far greater importance since it is the one statutory right over which a business—even if it chooses to share its use through licensing or franchising—cannot afford to lose control. It is also the one intellectual property right which is capable of both storing and growing any goodwill which its owner attracts, thus enhancing a business's value".

If open innovation hasn't reached you yet, there's a good chance that it soon will. And when it does, be sure to keep an open mind when you assess its benefits".

Terminus appeal hits the buffers

Earlier this year, JIPLP published a Current Intelligence note by Thorsten Lauterbach, "Copyright: A narrow defeat is still a defeat: integrity clipped before its best-before date" (Journal of Intellectual Property Law & Practice (2011) 6(6): 371-373; doi:10.1093/jiplp/jpr024). According to the abstract:
"The Stuttgart Higher Regional Court in Germany, balancing the right of integrity under copyright attributed to the architect of a work of architecture and the right to property held by the owner of the building, recently found against the grandson of Paul Bonatz, the architect of the Stuttgart terminus rail station and in favour of Deutsche Bahn AG, which sought to demolish part of that station during the construction of a new underground station.".
Thorsten has just informed us of the latest news in this dispute:
"You may recall my short comment on the author’s rights dispute revolving around the Stuttgart terminus station. Well, on 9 November the last word has now been spoken by the Federal Court of Justice (Bundesgerichtshof).

The Stuttgart 21 project (turning the railway terminus into an underground through station) had led to an author’s rights dispute between the owner of the terminus station and buildings, Deutsche Bahn AG, and the grandson of Paul Bonatz, one of the author-architects of the terminus building. The project required the destruction of both side wings of the terminus, as well as the grand staircase leading to the station hall. The author’s grandson, Peter Dübbers, sought to protect the author personality rights of his grandfather which he regarded as violated by the partial destruction of the original building. The remedies he pursued with this action were reconstruction of the north-west wing, and cessation of the imminent destruction of the south-east wing and the grand staircase (for a more detailed treatment of the legal arguments, see my earlier Current Intelligence note). 
Having lost in both instances, the last throw of the dice was an appeal against denial of leave to appeal (Nichtzulassungsbeschwerde) before the Federal Court, since the Stuttgart Higher Regional Court (Oberlandesgericht) had refused leave to appeal. 
On 9 November the Federal Court confirmed the decision by the Higher Regional Court and dismissed the appeal by Mr Dübbers. An appeal to the Federal Court would only have been in order if the legal issue was of fundamental significance, or if a decision was necessary in order to develop or ensure consistency of the law. The decision of the lower court was regarded as free from errors of law; in addition, it did not raise issues which had not been dealt with sufficiently by prior Federal Court jurisprudence. Accordingly Mr Dübbers’s case was without legal foundation. In Dübbers’ view the case did indeed raise a fundamental legal issue, namely in respect of the significance – and arguably the gradual lessening the value – of author’s personality rights. However, the Federal Court did not agree. 
This brings an end to the legal action. It follows the political decision taken by the people of Baden-Württemberg on 27 November in a rare referendum to continue with this polarising project".
Addendum: Thorsten has now provided a link to the decision (Az. I ZR 216/10, in German) of the Federal Court, which you can read here.  If you prefer it, there is also a shorter press notice (No. 186/11, also in German) here.

Books for review

Here are three newly published books, which need suitably qualified reviewers for JIPLP.  If you would like to review one, please email Sarah Harris at by not later than Thursday 15 December and let her know why you think you should be the reviewer.

Copyright And The Public Interest In China

By Guan H. Tang, Shanghai University of Finance and Economics, China)

November 2011 304 pp Hardback 978 0 85793 106 1
Hardback £79.95 online price £71.96.
Details of this book can be found here.


Intellectual Property, Pharmaceuticals And Public Health: Access to Drugs in Developing Countries

Edited by Kenneth C. Shadlen, London School of Economics and Political Science, UK, Samira Guennif, Université Paris 13, France, Alenka Guzmán, Autonomous Metropolitan University-Iztapalapa, Mexico and N. Lalitha, Gujarat Institute of Development Research, India).

November 2011 352 pp Hardback 978 1 84980 014 3
Hardback £85.00 online price £76.50
Further details of this book can be found here.


Die europäische Patentanmeldung und der PCT in Frage und Antwort

By Gerard Weiss and Wilhem Ungler

8. Auflage 2011. 478 Seite(n), gebunden.
ISBN 978-3-452-26819-8. sofort lieferbar EUR 118,00
Further details of this book can be found here

The Marmite Election

This year's Christmas special is "The Marmite Election" by Christopher Wadlow (Professor of Law, UEA Law School at the University of East Anglia in Norwich, UK, and a member of the editorial board of JIPLP). As the abstract explains:
Marmite (for those who do not know it) is a yeast-based condiment which, in the UK at least, is frequently used as a spread for toast or sandwiches. The advertising slogan, ‘Marmite: You either love it or hate it’ encapsulates the strongly differentiated responses which its unique taste provokes. 
For the 2010 UK general election, Marmite's proprietors, Unilever, ran a fictitious televised election campaign of their own, between imaginary ‘Love’ and ‘Hate’ parties. Perhaps in response to this, or perhaps in retaliation for being identified with the Hate Party, the British National Party apparently formed the intention of transmitting a party election broadcast in which the party leader, Nick Griffin, would have addressed his audience with a large image of a jar of Marmite floating above his right shoulder. Unilever objected, and an interim injunction was ordered to prevent the broadcast being transmitted in this form. 

This article comments upon the decision by which Arnold J banned the BNP from using the name and imagery of this popular, but controversial, food condiment; and its legal basis in terms of trade mark infringement, copyright infringement, and passing-off. It concludes by briefly comparing the legal protection accorded to a branded decoction of brewers' dregs to that claimed, with considerably less success, for other ‘intellectual properties’, living and dead, whose owners had cause to complain that their names, words, or images were appropriated for political purposes in the course of the 2010 General Election.
As a goodwill gesture, this splendidly researched and beautifully executed piece is freely available to everyone who visits this site. You can access it in html and pdf formats. Enjoy!

British court finds rivastigmine patent obvious

Author: Christopher Hayes (Atlantic Chambers, Liverpool)

Generics UK Limited (t/a Mylan) v Novartis [2011] EWHC 2403 (Pat), (Floyd J), 30 September 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr191, first published online: December 6, 2011

A court has invalidated Novartis' patent and SPC for rivastigmine as being obvious in light of prior art.

Legal context

The analysis of the inventive step of a patent requires a multifactorial assessment of technical subject area. The British courts and the EPO use slightly different frameworks to assess the inventive step. In this case, the Patents Court for England and Wales has stated that the same conclusion would be used using the EPO approach. The current case looks at the validity of a pharmaceutical patent, for the enantiomeric drug rivastigmine.


Rivastigmine is sold under the brand name ‘Exelon’, for the treatment of Alzheimer's disease (AD). Rivastigmine is an enantiomer: it contains a carbon atom which forms chemical bonds with four different chemical groups. Such enantiomers can exist in a right-handed or left-handed form. Often the first time such molecules are synthesized, the product will contain a mix of equal amounts of both enantiomers. Such mixtures containing an equal amount of both enantiomers are called racemates. The racemic mixtures can then be resolved into their individual enantiomers, for subsequent testing of their pharmacological properties.

Novartis held a patent for rivastigmine, UK 2,203,040 (the '040 patent) which had a priority date of 4 March 1987, which expired on 29 February 2008. The '040 had the benefit of supplementary protection certificate (SPC) which extended the period of protection until 30 July 2012. Generics UK commenced proceedings for the revocation of the '040 and the SPC on 3 March 2011. Given the proximity of the expiration date of the SPC, this matter proceeded to trial very quickly. In a little over six months, the matter was heard at trial on 5–7 September 2011.

The only attack brought forward by Generics UK was that the '040 patent was invalid for lack of inventive step. In consequence, the SPC for rivastigmine would also be invalid for failing to be covered by a basic patent. The obviousness case was based on the state of the current general knowledge (CGK) at the priority date and two publications.

Turning to the prior art publications, the first was a patent application by Weinstock (EPA 193,926) which disclosed the racemic mixture. The second publication was also by Weinstock from 1986 and was entitled ‘Pharmacological activity of anticholinesterases of potential use in the treatment of Alzheimer's disease’.

Floyd J found that, at the priority date, the clinical features of AD were known. Acetylcholine was a known neurotransmitter, and it was understood how acetylcholine was synthesized and acted on synaptic receptors. It was also known that there was a link between the pathology seen in AD and the acetylcholine system and it was postulated that the enhancement of the acetylcholine signalling system might be of therapeutic benefit in AD disease. This hypothesis was supported by some reported clinical data using the drugs physostigmine and tacrine.

Physostigmine was known to counteract the effect of overdoses of anticholinergic drugs and had also been shown some efficacy in AD. Physostigmine had severe limitations as a potential treatment; it caused intolerable side effects of therapeutic doses (or doses close to therapeutic) and has duration of action of typically 30 minutes. Although there were other hypotheses, the cholinergic was regarded as the most promising to yield potential drugs to treat AD.


For the purposes of the obviousness analysis, it did not matter whether one started with the Weinstock publication or with the application. The necessary steps were to start with choosing the racemate, resolving the racemate into its constituent enantiomers, and then finally preparing a medicinal compound containing rivastigmine for the treatment of AD.

The Weinstock articles showed that the racemate was the most promising candidate disclosed from the other compounds taught to choose for further research. Therefore it would be obvious to choose the racemate to start from.

It was further agreed that this racemate could be easily separated and that the skilled team would consider resolving a racemate into its enantiomers at the priority date. The evidence was that, since the advantages of an enantiomer cannot be predicted in advance, the skilled team would resolve the racemate to test the properties of the enantiomers. The judge therefore concluded that there was nothing inventive in deciding to resolve the racemate into the enantiomers, although it was noted that the absence of evidence from Novartis on the invention history assisted Generics UK in this regard. Once rivastigmine has been resolved, Floyd J considered it would be obvious to formulate it into a pharmaceutical composition.

Floyd J concluded that using rivastigmine for the treatment of AD was conceptually obvious from the Weinstock articles. It would also be obvious to resolve the enantiomers, and the chemistry involved in the resolution would be found to be unproblematic to the skilled team. Formulating a pharmaceutical composition of rivastigmine would be entirely obvious.

Although Floyd J applied the Windsurfing formulation to determine whether the '040 contained an inventive step, he said that his result was consistent with the problem–solution approach employed by the EPO. The problem was how to achieve the desired effect from an enantiomer starting with the racemate taught by the Weinstock articles, and the solution could be found in the common general knowledge.

In conclusion, the '040 patent was obvious and as a result the rivastigmine SPC was also invalid.

Practical significance

In the two most recent UK cases involving the obviousness of pharmaceutical enantiomer patents, Lundbeck (House of Lords) and Daiichi (Court of Appeal), the patents were held to be inventive, although the priority dates were later than in these cases.

Floyd J pointed out that an obviousness analysis will always turn on the facts of the individual case. In this case, the evidence was that the chemistry involved in the resolution of the enantiomers was straightforward and posed no problems to the skilled team to produce the enantiomers from the racemate, whereas, in Lundbeck and Daiichi, the chemistry involved in resolving the individual enantiomers from their respective racemates was not straightforward.

Although the judge reached a different conclusion regarding the validity of the rivastigmine enantiomer patent when compared with the enantiomer patents at issue in Lundbeck and Daiichi, he distinguished the cases based on their respective facts. It appears that a key difference was that the resolution of the enantiomer in this case did not involve any invention. Indeed, the resolution of the racemates into the single enantiomers in Lundbeck and Daiichi required invention.

Novartis's case on obviousness was not aided by the fact that it did not lead evidence on the history of its invention. Although the patentee is not obliged to bring forward such evidence, this case illustrates the importance of this type of evidence, particularly where validity is at stake. This case shows that patentees should be reluctant not to lead evidence of their invention story when resisting an obviousness attack.

Latest issue; aspirational branding and urban looting

The December 2011 issue
is the last to bear this colour.
Next month JIPLP launches
its smart new look for 2012
The December 2012 issue of the Journal of Intellectual Property Law & Practice (JIPLP) has been online for a little while now, but there has been so much going on that I forgot to let everyone know.  The online issue is available to all online and online/hardcopy subscribers as part of their subscription package.  non-subscribers can access the contents here and can purchase access to articles even  if they are not JIPLP subscribers.  Subscribers and non-subscribers alike can also see what has been available on the JIPLP Advance Access feature, where articles, Current Intelligence pieces and book reviews are posted weeks, and sometimes months, ahead of their paper publication date.  Again, this service is part of the subscription package, but non-subscribers can also pay for access.

The Editorial for this issue, 'Property! What property?', takes a look at the relationship between aspirational branding and urban looting. You can read it in full here:
"Property! What property?

This editorial was penned while shocked shopkeepers dig through the wreckage of their High Street stores in search of salvageable stock, while weary police sift through the ashes and the rubble in pursuit of evidence, forensic or otherwise, that will lead to a conviction. It is England's summer season of riots and looting, of random mindless violence and—in contrast—some curiously selective theft.

Desirable brands have been among the targets of the looters who, excited by the prospect of owning high fashion wear or cool sports clothing that lies beyond their immediate budgets and short-term expectations, have simply helped themselves. Some have hidden their faces under hoods and behind balaclava helmets, while others have taken no such precautions to preserve their anonymity. All have performed before an audience of security cameras and, as I write these words, many have already been visited by the enforcement agencies, charged and even sentenced for their criminal offences.

It is not just product brands that have suffered this treatment. Some popular High Street retail outlets have been ravaged too, their mannequins stripped, shelves cleared and carrier bags purloined as a handy means of making off with stolen property. Only e-tailers were spared, discounting the apocryphal tale of the young lad who smashed his computer screen in a hopeless attempt to raid an eBay vendor.

In November 2010 an editorial in this journal, entitled “IP and the Moral Maze”, decried the divorce which had taken place between the morality of intellectual property and the economics of it. That editorial argued that, for as long as intellectual property is seen merely as a means of adjusting the barriers between the trading territory of its owner and that of its competitors, and is shorn of its moral dimension, it will remain difficult to raise a persuasive case that copying is somehow wrong.

It now seems, at least in the consumer dystopia of England 2011, it is not merely intellectual property that has come adrift from its moral roots since the same fate has befallen physical property, both real and personal. Stealing an expensive and desirable pair of branded sports shoes is not just a question of taking possession of chattels without legal justification: it is a statement that one has bought into the aspirations which the brand conveys to those who wear it and that, as such an aspirant, one has a greater right to the shoes than does, for example, the inherently non-aspirational limited liability company which owns it. To put it another way, in terms of the aspirationally magnetic call of one leading brand owner, if you are a “Just do it” sort of person, you just do it.

What, if anything, can be done? This was never a problem when branding was a concept linked to cattle rather than to consumer goods and when trade marks reflected little other than a connection in the course of trade—but the genie of aspirational branding has been let out of the bottle and there's no chance of getting it back in. It sells goods, builds loyalty and makes both brand owners and consumers happy.

Is there such a thing as sensible aspirational branding? There was, once. Some readers may wish to ponder Disney's “small world” ethos, harking back to the 1960s, and its step-sister in Coca-Cola's 1970s “one world” aspiration, based on “I'd Like to Teach the World to Sing in Perfect Harmony”. Laudable as these aspirations are, one senses that they are worlds away from today's brands which compete in what is not so much a race to the bottom as a sprint to the edge: a brand must have ‘edge’ if it is to maximise its pulling power among young, brand-conscious purchasers.

So is there a way of branding that will foster a responsible attitude towards the property of others while yet remaining attractive, dynamic, unconventional and daring? Is there a way we can train consumers to keep their loyalty within manageable bounds? In short, can we use branding as a way of teaching respect for property, both physical and intellectual? And if these questions can be answered in the affirmative, who will take the risk of implementing such techniques in the volatile consumer markets of today?".

Infringements in transit: current law, future prospects

If the contents aren't on sale, or intended for sale,
in the EU, they can't be counterfeits, can they?
The Journal of Intellectual Property Law & Practice (JIPLP) is delighted to announce a seminar on Wednesday 18 January 2012, from 3pm to 6pm, on the topic "Infringements in transit: current law, future prospects". This event is kindly hosted by law firm Olswang LLP in its London office, 90 High Holborn.

The speakers are Marius Schneider (Eeman & Partners, Brussels), Olivier Vrins (Altius, Brussels) and Phillip Johnson (Visiting Senior Fellow, Queen Mary, London), and panelists are Michael Edenborough QC (Serle Court), Paul Stevens (Olswang LLP) and Lucy Nichols (Nokia). Jeremy Phillips will be in the chair.

Marius, Phillip, Paul and Lucy are members of the JIPLP editorial board, and Olivier is the author of a deep analysis of proposed reform, "The European Commission's proposal for a regulation concerning Customs enforcement of IP rights", which was published in the November 2011 issue of JIPLP. Marius and Olivier are the editors of the authoritative Oxford University Press publication Enforcement of Intellectual Property Rights through Border Measures: Law and Practice in the EU, the second edition of which will be published shortly.

The programme is provisional at this stage, but it is envisaged that Phillip will explain the framework of EU legislation on the suspensive detention of goods, Marius will discuss the Nokia and Philips rulings and Olivier will address prospects of reform. The final version of the programme will be published in due course.

Admission is free, refreshments will be provided and it is expected that there will also be CPD points.

If you'd like to book yourself in, please email me here with the subject line "Fakes in Transit seminar".  Please don't expect an instant acknowledgement, but I'll do what I can.

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.


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.


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.