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GEOGRAPHICAL INDICATIONS AND

PLANT VARIETY DENOMINATIONS

BOIP, Trade Mark Package seminar

Olivier Vrins, 13 December 2018

/ OVERVIEW

Approachable Thorough Hands-on

/ / Approachable Thorough

/ / / Approachable

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Conclusion

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Absolute Grounds

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Relative Grounds

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ABSOLUTE GROUNDS FOR REFUSAL

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STATUS QUO

GROUND OLD BCIP NEW BCIP

Trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the geographical origin of the goods (!!! Does not apply to collective marks: see art. 2.34bis(2) !!!)

Art. 2.11.1(c)

Art. 2.2bis(1)(c)

Trademarks which are of such a nature as to deceive the public, for instance with regard to the nature, quality or geographical origin of the goods or services

Art. 2.4(b)

Art. 2.2bis(1)(g)

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ADDITIONAL GROUND – OLD REGIME

GROUND OLD BCIP NEW BCIP

the registration of trademarks for wines containing geographical indications to designate wines or that consist of such indications, or the registration of trademarks for spirits containing geographical indications to designate spirits or that consist of such indications in respect of wines or spirits that do not have such origin, unless the filing that led to such registration was made in good faith before 1 January 2000 or before the geographical indication concerned was protected in the country of origin or in the EU

Art. 2.4.(g)

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= TRIPS, Art. 23(2)

Quid: Foodstuffs and agricultural products? Non-agricultural PDOs/PGIs?

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ADDITIONAL GROUNDS – NEW REGIME (I)

GROUND OLD BCIP NEW BCIP

Trade marks which are excluded from registration, pursuant to Union legislation or the local law of any Benelux country, or to international agreements to which the Union is party or having effect in any Benelux country, providing for protection of designations of origin (PDOs) and geographical indications (PGIs).

- Art. 2.2bis.1(i)

Trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional terms for wine (TTWs).

- Art. 2.2bis.1(j)

Trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional specialities guaranteed (TSGs).

- Art. 2.2bis.1(k)

2 cumulative requirements: • The PDO/PGI/TTW/TSG is protected in the Benelux under EU or international law (or, for

PDOs/PGI, under national law)

• The relevant legal instrument provides for an absolute ground for refusal 6

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• Agricultural products of EU origin: Full harmonization (CJEU, C-478/07 Budĕjovický Budvar; C-56/16 Port Charlotte)

ADDITIONAL GROUNDS – NEW REGIME (II)

PDOs-PGIs TTWs TSGs Databases

Spirit drinks

Art. 23(1) Reg 110/2008

- - E-Spirits

Foodstuffs and agrifood

Art. 14(1) Reg 1151/2012

- - DOOR

Wines

Art. 102 Reg 1308/2013

Art. 41 Reg 607/2009

- E-Bacchus

Aromatized wines

Art. 19 Reg 251/2014

- - -

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• Non-agricultural products of EU origin: • National laws

• Products from non-EU countries: • International agreements

https://ec.europa.eu/info/sites/info/files/food-farming-

fisheries/food_safety_and_quality/documents/list-gis-non-eu-countries-

protected-in-eu_en.pdf

E.g. Agreement between the European Community and the Swiss

Confederation on trade in agricultural products, art. 9(1) of

Annex 12

ADDITIONAL GROUNDS – NEW REGIME (III)

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• In general, trademarks must be refused IF:

ADDITIONAL GROUNDS – NEW REGIME (IV)

1. The earlier PDO/PGI/TTW/TSG is protected as such under the legal

instrument containing the ground of refusal;

2. The later trademark (application) consists of or contains the

PDO/PGI/TTW/TSG; and

3. The later trademark covers products of the same type as those to

which the PDO/PGI/TTW/TSG applies, and do not comply with the

product specification of the PDO/PGI/TTW/TSG.

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• Examples:

- EUTM 014540091 for wines with registered designation of origin

Champagne

- EUTMA 015469125 “I AM CHAMPAGNE” for wines and spirits

>< PDO-FR-A1359 “Champagne”

ADDITIONAL GROUNDS – NEW REGIME (V)

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- BX 1035952 “BOURGONDIA” for alcoholic drinks (excl. beers)

>< PDO-FR-A0650 « Bourgogne », PDO-FR-A0676 « Crémant de

Bourgogne », PDO-FR-A0737 « Bourgogne mousseux », PDO-FR-

A0738 « Bourgogne Passe-tout-grains », PDO-FR-A0739

« Bourgogne aligoté », PDO-FR-A0931 « Bourgogne (grand)

ordinaire »

- EUTM 05421474 “PORT CHARLOTTE” for whisky

>< PDO-PT-A1540 “Porto”, “Port” and “Port Wine”

CJEU, 14/09/2017, C-56/16 Port Charlotte

ADDITIONAL GROUNDS – NEW REGIME (VI)

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ADDITIONAL GROUNDS – NEW REGIME (VII)

GROUND OLD BCIP NEW BCIP

Trade marks which consist of, or reproduce in their essential elements, an earlier plant variety denomination (PVD) registered in accordance with Union legislation or the local law of any Benelux country, or international agreements to which the Union is a party or having effect in any Benelux country, providing for protection of plant variety rights, and which are in respect of plant varieties of the same or closely related species.

- Art. 2.2bis.1(l)

4 cumulative requirements:

- a PVD registered under EU, national or international (UPOV) law (cf. CPVO

Variety Finder database) – regardless of whether the PVD is still protected;

- a later trademark (application);

- which consists of, or reproduce in its essential elements, the earlier PVD;

- in respect of plant varieties of the same or “closely related species” (cf. CPVO

guidelines on art. 63 of Regulation 2100/94). 12

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ADDITIONAL GROUNDS – NEW REGIME (VIII)

Examples:

• EUTM 16892143 for plants, flowers etc.

• EUTM 16887069 for plants, flowers etc.

>< MAX (NL, DE,…)

>< MIKRO (UK)

EUIPO, BoA, 18 and 20/07/2018, R2541/2017-2 and

R2542/2017-2

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RELATIVE GROUNDS FOR REFUSAL

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NEW GROUND (I)

GROUND OLD BCIP NEW BCIP

A trade mark that is the subject of an opposition shall be refused registration or, if it has been registered, is susceptible of cancellation: i. where an application for a designation of origin or a

geographical indication had already been submitted, in accordance with Union legislation or the local law of a Benelux country, prior to the date of application for registration of the trade mark or the date of the priority claimed for the application, subject to its subsequent registration;

ii. that designation of origin or geographical indication confers to the person authorised under the relevant law to exercise the rights arising therefrom the right to prohibit the use of a subsequent trade mark (art. 2.2ter.3(c))

- Art. 2.2bis.1(l) 2.14.2(c)

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• Agricultural products of EU origin:

NEW GROUND (II)

PDOs-PGIs TTWs TSGs Databases

Spirit drinks

Art. 16 Reg 110/2008

- - E-Spirits

Foodstuffs and agrifood

Art. 13(1) Reg 1151/2012

- Art. 24 Reg 1151/2012

DOOR

Wines

Art. 103(2) Reg 1308/2013

Art. 113 Reg 1308/2013

Art. 40(2) Reg 607/2009

- E-Bacchus

Aromatized wines

Art. 20(2) Reg 251/2014

- - -

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• Non-agricultural products of EU origin: • National laws (e.g.: art. VI.124 Belgian Code of Economic Law)

• Products from non-EU countries: • International agreements

https://ec.europa.eu/info/sites/info/files/food-farming-

fisheries/food_safety_and_quality/documents/list-gis-non-eu-countries-

protected-in-eu_en.pdf

E.g. Agreement between the European Community and the Swiss

Confederation on trade in agricultural products, art. 7 of Annex

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NEW GROUND (III)

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• Example: Regulation 1151/2012, art. 13(1)

NEW GROUND (IV)

Registered names shall be protected against:

(a) 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 [and do not comply with the product specification of the

protected 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. 18

/ NEW GROUND (V)

• CJEU, C-4/10 & C-27/10 BNIC v Gust. Ranin Oy: “comparable products”

• CJEU, C-44/17 Scotch Whisky Association v Klotz:

- ‘Use’: in a form that is either identical or visually/phonetically similar

- Direct: use on the product or its packaging

- Indirect: use on additional marketing material

- ‘Evocation’: when the average European consumer who is reasonably well

informed and reasonably observant and circumspect is confronted with the

disputed designation, the image triggered directly in his mind is that of the

product whose PDO/PGI is protected (e.g. partial incorporation thereof,

conceptual proximity).

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• Examples:

- EUTMA 015810146 “GRUYELL’OR” for cheese and milk products

>< FR/PGI/0005/0612 « GRUYERE »

>< Swiss PDO « GRUYERE » (EC-Switzerland Agreement)

- Finnish TMA “VERLADOS” for spirit drinks

>< PGI-FR-A1222 “Calvados”

CJEU, 21/01/2016, C-75/15

NEW GROUND (VI)

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CONCLUSION

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• Absolute grounds:

• Old absolute ground for PDOs/PGIs for wine and spirit

drinks broadened to all PDOs/PGIs

• New absolute grounds for TTWs, TSGs, PVDs

• Relative grounds:

• New relative ground re PDOs/PGIs

• NO relative grounds re TTWs, TSGs, PVDs

• A missed opportunity? Observations by third parties

(art. 40 Dir. 2015/2436)

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/ ALTIUS Brussels ALTIUS Louvain-La-Neuve

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t +32 2 426 14 14 t +32 10 88 11 67

www.altius.com

IN COOPERATION WITH TIBERGHIEN

olivier.vrins@altius.com

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