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AAAML X International Congress 2013

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.

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AAAML X International Congress 2013

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  1. THE PROTECTION OF GEOGRAPHICAL INDICATIONS IN THE EU: scope of protection and relationshipbetweentrademarks and GIs AAAML X International Congress 2013 Edith Van den Eede Italian and European trademark attorney • AsociaciónAntiguosAlumnos de MagísterLucentinvsParma, Italy15 March 2013

  2. TOPICS I. GIsversus Trademarks II. RelationshipbetweenGIs and Trademarks III. Concludingremarks

  3. 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)

  4. I. GeographicalIndicationsversus Trademarks • 1. Setting the scene: • keyconcepts and differences

  5. I. GIsversus Trademarks: 1. Setting the scene *Collective/certification trademark: purpose of guaranteeing the origin/quality/nature of the goods or services belonging to the particular association

  6. GeographicalIndicationsversus Trademarks • 2. Protection of GIs and Trademarks in the EU

  7. GeographicalIndicationsversus Trademarks • 2. Protection of GIs and Trademarks in the EU • Defenceagainstcounterfeiting: • TMs (includingcollectiveTMs): comparisonbetweensignsand betweenproducts, likelihood of confusion • GIs:certainsituationsprohibited under GI Regulation (beyond the likelihood of confusion), comparisonbetweenproducts:

  8. GeographicalIndicationsversus 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 [..]”

  9. GeographicalIndicationsversus Trademarks • 2. Protection of GIs and Trademarks in the EU • TMs (includingcollectiveTMs): limitations of effectsprovided for: • « descriptive use defence » • (legitimateuse by a 3rd party, in trade, of a signidentical or similar to a trademark ̶ indicationsconcerning the kind, quality, quantity, intendedpurpose, value, geographicalorigin, the time of production of the goods, or othercharacteristics of the goods̶ if in accordance with honestpractices) • GIs: no limitationsprovided for

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

  11. II. RelationshipbetweenGIs and Trademarks • 1. Scenario where the GI willprevail : A. Legal framework • Article 14 (1) (1° subparagraph) Regulation (EU) No. 1151/2012: • If a PDO or a PGI isregistered under thisRegulation, the registration of a trademark must be refusedwhere: • the use of the markwouldcontraveneArticle 13 (1) Reg. No. 1151/2012, • the markrelates to a product of the sametype, • the trademarkapplicationissubmittedafterthe date of submission of the PDO/PGI registrationapplication to the Commission. • Article 14 (1) (2nd subparagraph)Regulation (EU) No. 1151/2012: • Trademarks registered in breach of the first subparagraphshall be invalidated.

  12. II. RelationshipbetweenGIs and Trademarks • 1. Scenario where the GI willprevail : 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”.

  13. II. RelationshipbetweenGIs 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.

  14. II. RelationshipbetweenGIs and Trademarks • 1. Legal framework • Articles 164 and 7(1)(k) Regulation (EU) No. 207/09 («CTMR»): • « The CTMR shallnotaffect the PDO/PGI Regulation and in particularArticle 14 thereof. » • « Trademarks whichcontain or consist of a designation of origin or a geographicalindicationregistered under the PDO/PGI Regulation , shallnot be registeredwhentheycorresponds to one of the situationscovered by Article 13 of the saidRegulation and regarding the sametype of product , on the conditionthat the applicationhasbeensubmittedafter the PDO/PGI filing date with the Commission » • Article 170 (2) Italian IP Code: • « With reference to trademark applications for agriculturaland primaryagriculturalproducts and foodstuffscontaininggeographicalnames , the Italian PTO transmits a copy of the mark and anyotherdocumentation to the Ministry of Agriculturethatexpressesits opinion within 10 days from the receipt of the request. »

  15. II. RelationshipbetweenGIs and Trademarks • 1. Scenario where the GI willprevail : 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)

  16. Court of Justice Joined Cases C-4/10&C-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. • => 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)

  17. II. RelationshipbetweenGIs and Trademarks • 1. Scenario where the GI willprevail : 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.

  18. II. RelationshipbetweenGIs and Trademarks • 1. Scenario where the GI willprevail : B. Relevant case law • OHIM CancellationDivisiondecision of 6 October 2004 • in Case 609C703884/1 • Invalidation of the trademark RONCARIFORT (word) registered for (amongstothers) ‘cheese’ on the basis of the earlier ROQUEFORT PDO (invalidation for allproducts/servicesclaimed) • OHIM OppositionDivisiondecision of 7 December 2010 • in Case B001496275 • Rejection of the trademark DANAZOLA (word) filed for (amongstothers) ‘dairyproducts’ on the basis of the earlier GORGONZOLA PDO

  19. II. RelationshipbetweenGIs and Trademarks • 1. Scenario where the GI willprevail : B. Relevant case law • OHIM OppositionDivisiondecision 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 (amongstothers) ‘olive oil’ in class 29 and related services in class 35 on the basis of the earlier SIERRA DE CAZORLA PDO

  20. II. RelationshipbetweenGIs 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 whichcontravenesArticle 13(1), may continue to be used and renewed for thatproductif: • Applied for, registered(or established by use ifthatpossibilityisprovided for by the legislationconcerned) in goodfaithwithin the EU territory, before the PDO/PGI application date with the Commission, • Providedthat no grounds for itsinvalidity or revocationexist under the CTMR or under Directive 2008/95/EC ( « TM Directive » ) • « In suchcases, the use of the PDO or PGI shall be permittedaswellas use of the relevant • trademarks »

  21. II. RelationshipbetweenGIs 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).

  22. II. RelationshipbetweenGIs 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

  23. II. RelationshipbetweenGIs 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 JihočeskáZlatáNiva • - 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.

  24. II. RelationshipbetweenGIs and Trademarks • 2. Coexistence scenario : • TribunalSuperior de Justicia Madrid in Case No. 1519/2012 of 8 November 2012 and Case No. 1582/2012of 15 November 2012: • Invalidating the previous decisions of the Spanish PTO to refuse the registration of LAMBRUSCO ANTICO CASATO (figurative) and LAMBRUSCO DELL’EMILIA 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

  25. II. RelationshipbetweenGIs and Trademarks • 3. Scenario where the trademark willprevail: A. Legal framework • Article 6(4) Regulation (EU) No. 1151/2012: • A nameproposed for registrationas a designation of origin or geographical • indicationshallnot be registeredwhere: • in light of a trademark’sreputation and renown, • and the length of time ithasbeenused, • registration of the nameproposedas the designation of origin or geographicalindication , could be liable to mislead the consumer as to the trueidentity of the product.

  26. II. RelationshipbetweenGIs and Trademarks • 3. Scenario where the trademark willprevail: B. Relevant case law • Corte di Cassazione Case 15958 of 20 September 2012: • Third requirement missing (lack of deception)

  27. III. Concluding remarks GRAZIE !! Edith Van den Eede Italian and European Trademark Attorney E-mail: Edith.VandenEede@praxi-ip.com Phone: +39 06 397 499 85

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