presentation parma relationship gis and trademarks 15march2013

AAAML X International Congress 2013

Edith Van den Eede

Italian and European trademark attorney

THE PROTECTION OF

GEOGRAPHICAL INDICATIONS

IN THE EU:

scope of protection and relationship

between trademarks and GIs

Asociación Antiguos Alumnos de Magíster LucentinvsParma, Italy15 March 2013

TOPICS

I. GIs versus Trademarks

II. Relationship between GIs and Trademarks

III. Concluding remarks

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)


1. Setting the scene:

key concepts and differences

I. GIs versus Trademarks: 1. Setting the scene

GEOGRAPHICAL INDICATIONS

(PDO/PGI)

TRADEMARKS

Definition Geographical origin (link) Entrepreneurial origin*

Objective Protection of consumers and producers Distinguishing products/services

Required characteristic Historical (social and cultural) recognition New (available)

Application scope Products originating in geographical area Products or services

Ownership of right Co-ownership/groups Individual

“Official” controls Yes No

Need to be renewed No Yes

Registration/renewal fee No Yes

Transfer possibility No Assignment /Licence

Possibility to become generic No Yes

Type of right Exclusive right Exclusive right

Limitation of the effects No yes

Enforcement Private and/or public Private

*Collective/certification trademark: purpose of guaranteeing the origin/quality/nature of the goods

or services belonging to the particular association


2. Protection of GIs and Trademarks in the EU



Defence against counterfeiting:

� TMs (including collective TMs): comparison between signs and

between products, likelihood of confusion

� GIs: certain situations prohibited under GI Regulation (beyond the

likelihood of confusion), comparison between products:



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 evokedwhere there is no likelihood of confusion between the productsconcerned [..]”



� TMs (including collective TMs): limitations of effects provided for:

« descriptive use defence »

(legitimate use by a 3rd party, in trade, of a sign identical or similar to a

trademark ̶ indications concerning the kind, quality, quantity, intended purpose, value,

geographical origin, the time of production of the goods, or other characteristics of the

goods ̶ if in accordance with honest practices)

� GIs: no limitations provided for


1. Scenario where the GI will prevail

2. Coexistence scenario

3. Scenario where the trademark will prevail


1. Scenario where the GI will prevail : A. Legal framework

� Article 14 (1) (1° subparagraph) Regulation (EU) No. 1151/2012:

If a PDO or a PGI is registered under this Regulation, the registration of a trade markmust be refused where:

- the use of the mark would contravene Article 13 (1) Reg. No. 1151/2012,

- the mark relates to a product of the same type,

- the trade mark application is submitted after the date of submission of the

PDO/PGI registration application to the Commission.

� Article 14 (1) (2nd subparagraph) Regulation (EU) No. 1151/2012:

Trademarks registered in breach of the first subparagraph shall be invalidated.


1. Scenario where the GI will prevail : 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 designationsof origin and geographical indications, on the one hand, and trademarks, onthe other”.

II. Relationship between GIs and Trademarks : Legal framework

� Article 13 (1) Regulation (EU) No. 1151/2012:

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 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.


1. Legal framework

� Articles 164 and 7(1)(k) Regulation (EU) No. 207/09 («CTMR»):

« The CTMR shall not affect the PDO/PGI Regulation and in particular Article 14 thereof. »

« Trademarks which contain or consist of a designation of origin or a geographical indication registered

under the PDO/PGI Regulation , shall not be registered when they corresponds to one of the situations

covered by Article 13 of the said Regulation and regarding the same type of product , on the condition

that the application has been submitted after the PDO/PGI filing date with the Commission »

- Article 170 (2) Italian IP Code:

« With reference to trademark applications for agricultural and primary agricultural products and foodstuffs

containing geographical names, the Italian PTO transmits a copy of the mark and any other documentation to the

Ministry of Agriculture that expresses its opinion within 10 days from the receipt of the request. »

II. Relationship between GIs and Trademarks1. Scenario where the GI will prevail : 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)

� 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 notmeet the relevant specifications may be categorized as an ‘evocation’ for the purposes ofArticle 16(b) of Regulation No. 110/2008.

=> The registration of a mark containing a geographical indication, or a termcorresponding to that indication and its translation, with respect to spirit drinks whichdo not meet the specifications set for that indication, must be refused or invalidated.

Wide scope of ‘comparable products’: “regardless of their various categories, ‘spiritdrinks’ covers drinks which have common objective characteristics and which areconsumed, from the point of view of the relevant public, on occasions which are largelyidentical. Furthermore, they are frequently distributed through the same channels and

subject to similar marketing rules.” (§ 54)


� 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.


� OHIM Cancellation Division decision of 6 October 2004

in Case 609C703884/1

Invalidation of the trademark RONCARIFORT (word) registered for

(amongst others) ‘cheese’ on the basis of the earlier ROQUEFORT

PDO (invalidation for all products/services claimed)

� OHIM Opposition Division decision of 7 December 2010

in Case B001496275

Rejection of the trademark DANAZOLA (word) filed for (amongst

others) ‘dairy products’ on the basis of the earlier GORGONZOLA

PDO


� OHIM Opposition Division decision 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

(amongst others) ‘olive oil’ in class 29 and related services in class 35 on

the basis of the earlier SIERRA DE CAZORLA PDO


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 which contravenesArticle 13(1), may continue to be used and renewed for that product if:

- Applied for, registered (or established by use if that possibility is provided for by

the legislation concerned) in good faith within the EU territory, before the

PDO/PGI application date with the Commission,

- Provided that no grounds for its invalidity or revocation exist under the CTMR or

under Directive 2008/95/EC ( « TM Directive » )

⇒ « In such cases, the use of the PDO or PGI shall be permitted as well as use of the relevant

trademarks »

II. Relationship between GIs 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 conflictbetween a name validly registered as a PGI in accordance with the simplifiedprocedure under Article 17 of that regulation and a trademark corresponding toone 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 registrationof that name and before the entry into force of Regulation No. 692/2003modifying Regulation No. 2081/92.

The date of the entry into force of the registration of that name constitutes thereference date for the purposes of Article 14(1).


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 theauthorities and courts called upon to apply the provisions in question, afterregistration.

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 carryout, 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 TurinAppeal Court decision allowing co-existence of Bayerisches Bier PGI with theDutch BAVARIA branded beer


� Commission Regulation No. 32/2010 of 14 January 2010 entering

a name in the PDO/PGI register :

- Czech Republic application to register the name Jihočeská Zlatá Niva

- Objection by Slovakia on the basis that registration of the name wouldjeopardize the existence of prior trademarks registered in Slovakia.

- No sufficient evidence that registration of the name would be liable tomislead consumers as to the true identity of the product: no evidence on thedegree of distinctiveness of the mark due to its reputation, renown and lengthof time it was used (only evidence that the name can be associated with aname NIVA)

- The NIVA term was used in a generic way.


� Tribunal Superior de Justicia Madrid in Case No. 1519/2012 of 8

November 2012 and Case No. 1582/2012 of 15 November 2012:

- Invalidating the previous decisions of the Spanish PTO to refuse theregistration of LAMBRUSCO ANTICO CASATO (figurative) andLAMBRUSCO DELL’EMILIA CANOTTIERI (figurative) for “Lambruscowine” in class 33

- LAMBRUSCO is generic (vine, species of grape), registered PDOs being:Lambrusco Grasparossa di Castelvetro, Lambrusco Mantovano, LambruscoSalamino di Santa Croce and Lambrusco di Sorbara

II. Relationship between GIs and Trademarks3. Scenario where the trademark will prevail: A. Legal framework

� Article 6(4) Regulation (EU) No. 1151/2012:

A name proposed for registration as a designation of origin or geographical

indication shall not be registered where:

- in light of a trademark’s reputation and renown,

- and the length of time it has been used,

- registration of the name proposed as the designation of origin or

geographical indication , could be liable to mislead the consumer as to

the true identity of the product.

II. Relationship between GIs and Trademarks3. Scenario where the trademark will prevail: B. Relevant case law

� Corte di Cassazione Case 15958 of 20 September 2012:

Third requirement missing (lack of deception)

III. Concluding remarks

GRAZIE !!

Edith Van den Eede

Italian and European Trademark Attorney

E-mail: [email protected]

Phone: +39 06 397 499 85

presentation parma relationship gis and trademarks 15march2013

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