Case-law on GIs and conflicts with trade marks

1. Case-law on GIs and conflicts with trade marks AAAML XI INTERNATIONAL CONGRESS Camara di Commercio di Parma March 15, 2013 Aitor Pomares apomares@berenguer-pomares.com

2. PLAN TERMS PROTECTED BY THE GI EVOCATION GEOGRAPHICAL NAMES WITHIN THE DEFINED AREA GOODS / SERVICES CAUGHT BY THE PROHIBITION

3. TERMS PROTECTED BY THE GI

4. TERMS PROTECTED BY THE GI GI grants an exclusive right (of collective use) on the protected name. PDO “PARMIGIANO REGGIANO” Art. 13.1 in fine Reg. 1151/2012: “Where a PDO or a PGI contains within it the name of a product which is considered to be generic, the use of that generic name shall not be [regarded as infringement]”. PDO “PROSCIUTTO DI PARMA” PDO “GRANA PADANO” ¿ ?

5. TERMS PROTECTED BY THE GI GCEU T‑291/03, Judgment of 12/9/2007 PDO “GRANA PADANO” vs. CTM “GRANA BIRAGHI” Registered CTM: “GRANA BIRAGHI” Holder: BiraghiS.p.A. 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 Application for invalidity Applicant: Consorzio per la tutela del formaggioGranaPadano Earlier right: PDO “GRANA PADANO”

6. TERMS PROTECTED BY THE GI T‑291/03 Applicant for invalidity: ‘grana’ is not a generic term on the basis of its distinctive character which stems from recognition of the PDO ‘grana padano’ term ‘grana’ was originally a geographical expression, used to designate a small stream which was a tributary of the Po and was situated in a valley actually called Valle Grana CTM holder: term ‘grana’ is generic in nature and that it designates a type of cheese which is slowly matured, semi-fat, cooked, hard and granular. That term literally refers to the granular structure of the cheese (…) and it does not in itself designate a geographical area or a specific area of origin

7. TERMS PROTECTED BY THE GI T‑291/03 Court: • Legal situation in Italy: 73. (…) mention must be made, above all, of the legislative position as regards the protection of the name ‘granapadano’ in Italy and the historical development thereof. 74. (…) the first legislative recognition of the name ‘grana’ dates back to (…) Royal Decree-Law No 1177 of 17 May 1938 introducing provisions to supplement the rules on the production and sale of cheeses, GURI No 179 of 8 August 1938 (…) The Decree shows that grana was produced in a number of areas in the Padanian Valley, near Parma, Reggio Emilia and Lodi, and in Emilia, Lombardy and Venetia. The name ‘granapadano’, by contrast, is not mentioned in the Decree. (…) 78. The qualifier ‘padano’ was therefore inserted not to restrict the scope of the PDO to certain granas only, but in order to place them all under the same increased protection, conferred initially by Italian legislation and subsequently by Regulation No 2081/92. It follows from this that the changes in the Italian legal context indicate that the name ‘grana’ is not generic.

8. TERMS PROTECTED BY THE GI • Legal situation in Italy: 84. (…) it is apparent from numerous formal fraud reports by the Central Bureau for the Suppression of Fraud of the Italian Ministry of Agriculture and Forests (…) that the Italian authorities systematically carry out seizures of cheeses bearing only the indication ‘grana’ in view of the fact that such a practice constitutes an infringement of the PDO ‘grana padano’ as protected by Regulation No 1107/96. • Traditional term: 81.(…) It is irrelevant whether the name ‘grana’ is based on the fact that the cheese which it designates has a granular structure or on the fact that it was originally produced in the Valle Grana, since, under Article 2(3) of Regulation No 2081/92, a PDO may also be constituted by a traditional non-geographical name designating a foodstuff originating in a region or specific place which presents homogenous natural factors which distinguish it from the areas adjoining it. • No objections during EU recognition: 86. (…) no Member State had raised the question of the allegedly generic nature of the name ‘grana’ within the regulatory committee which the Commission consulted with a view to the adoption of Regulation No 1107/96.

9. TERMS PROTECTED BY THE GI Other cases: • French PDO “Brocciu Corse” or “Brocciu” • French PDO “Reblochon de Savoie” or “Reblochon” • Spanish PDO “Torta del Casar”

10. EVOCATION

11. EVOCATION CJEU C-87/97, Judgment of 4/3/1999. PDO “GORGONZOLA” vs. Austrian TM “CAMBOZOLA‘” • Marketing since 1977, plus Austrian registered TM since 1983 • PDO “Gorgonzola” protected under EU sui generis system since 1996. Preliminary ruling raised by Austrian Court. Questions arose in proceedings concerning PDO infringement action plus cancellation of “CAMBOZOLA” TM.

12. EVOCATION 25. Evocation‘ (…) covers a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected. 26. (…) it is possible (…) for a protected designation to be evoked where there is no likelihood of confusion between the products concerned and even where no Community protection extends to the parts of that designation which are echoed in the term or terms at issue. 27. Since the product at issue is a soft blue cheese which is not dissimilar in appearance to 'Gorgonzola‘, it would seem reasonable to conclude that a protected name is indeed evoked where the term used to designate that product ends in the same two syllables and contains the same number of syllables, with the result that the phonetic and visual similarity between the two terms is obvious. Art. 14(2) Reg. PDO and PGI: use of earlier TM registered in good faith may continue. CJUE: “It is for the National Court to decide”

13. EVOCATION Other cases: • RONCARIFORT evokes PDO “Roquefort”. OHIM Cancellation Div.’s Decision of 6/10/2004 • CAZORLIVA evokes PDO “Sierra de Cazorla” (ex officio rejection). OHIM BoA’s Decision of 26/10/2012, R 1731/2012-2 • PARMESAN evokes PDO “Parmigiano-Reggiano”. C‑132/05 Judgment of 26/2/2008

14. EVOCATION Proceedings 170/2012, Commercial Court of Albacete

15. EVOCATION Proceedings 234/2012, CTM Court of Alicante

16. GEOGRAPHICAL NAMES WITHIN THE DEFINED AREA

17. GEOGRAPHICAL NAMES WITHIN THE DEFINED AREA GCEU T-237/08, Judgment of 11/5/2010 “CUVÉE PALOMAR” CTM applied for: “CUVÉE PALOMAR” for ‘wines’ Ex officio rejection based on 7(1)(j) CTMR, DO “VALENCIA”

18. GEOGRAPHICAL NAMES WITHIN THE DEFINED AREA 83. (…) the Member States are competent (..) to use the name of a local administrative area, a part thereof or a small locality to designate a quality wine psr. In such a case, that name cannot be used to designate products of the wine sector which do not come from that local administrative area (…). 85. (…) Regulation on the Registered Designation of Origin ‘Valencia’ and its Regulatory Council, adopted by the Spanish legislature, provides that the protection granted by that registered designation of origin covers the expression ‘valencia’ and all designations of the sub‑regions, districts, local administrative areas, localities and estates which comprise the production and ageing areas referred to in Article 4. 86. (…) provides that the area of production protected by the registered designation of origin ‘valencia’ consists of, inter alia, the sub‑region Clariano, which includes, inter alia, a local administrative area with the name el Palomar. 87. The name el Palomar thus constitutes a geographical indication for a quality wine psr under Spanish law and, accordingly, under Article 52 of Regulation No 1493/1999 (…) 88. (…) it therefore constitutes a geographical indication identifying wines within the meaning of Article 7(1)(j) of Regulation No 40/94. 112. the Board of Appeal was right to find that the mark applied for was inadmissible on the basis of the absolute ground for refusal laid down in Article 7(1)(j) of Regulation No 40/94.

19. GEOGRAPHICAL NAMES WITHIN THE DEFINED AREA OHIM Opp. Div.’s Decision of 13/6/2012, B-1859621 PGI “CítricosValencianos” CTM applied for: Goods and services, among others: ‘fruits, seeds and natural plants’ ‘Retailing in shops and via global computer networks of foodstuffs of all kinds’ Opposition based on Art. 8(4) CTMR and arts. 13 and 14 Reg. PDO and PGI

20. GEOGRAPHICAL NAMES WITHIN THE DEFINED AREA The 4 requirements of art. 8(4) CTMR were fulfilled: - Proprietorship of other sign used in the course of trade - Use of more than a mere local significance - Rights acquired prior to the date of application of the contested CTM - Right to prohibit use a subsequent TM under the Law governing that sign Regulation 1151/2012 (Arts. 13 and 14) The Opp. Div. found that the: • PGI was evoked, bearing in mind that Tavernes de la Valldigna is a municipality within the define area (letter b) • Use of the applied CTM would exploit the reputation of the PGI (letter a)

21. GOODS / SERVICES CAUGHT BY THE PROHIBITION

22. GOODS / SERVICES CAUGHT BY THE PROHIBITION Art. 13 of Reg. for agricultural products and foodstuffs, Art. 16 of Reg. for spirits and Art. 118 quaterdecies of Reg. for wines: 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. CJEU C-4/10, Judgment of 14/7/2011, “Cognac / Konjakit” 54. In the situation referred to in Question 2, in which the products not covered by a geographical indication are spirit drinks, it seems reasonable to hold that that situation may concern products comparable to the spirit drink registered under that geographical indication: 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.

23. GOODS / SERVICES CAUGHT BY THE PROHIBITION OHIM Cancellation Div.’s Decision of 6/10/2004 Registered CTM: “RONCARIFORT” Goods and services: • Cheeses; meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; compote; eggs, milk and milk products; edible oils and fats. • Agricultural, horticultural and forestry products and grains (not included in other classes); living animals; fresh fruits and vegetables; seeds, natural plants and flowers; substances for the animals feeding; malt. • Storing and delivery services of food products and beverages. Invalidity action based on earlier PDO “Roquefort” plus earlier TMs

24. GOODS / SERVICES CAUGHT BY THE PROHIBITION “(15.4) Therefore, the trademark shall be invalidated under Article 14 in connection with Article 13(1)(b) of Regulation 2081/92 at least for the “same type of products” as provided for in Article 14. We deem that that expression shall include all the goods and services within the agricultural and food sector, since Regulation 2081/92 refers to it. Otherwise, a range of agricultural and food goods and services would unduly benefit from the reputation of the designations of origin and the quality attributed to the product protected by a designation of origin protected under said Regulation. Goods in classes 29 and 31 of the contested trademark are included in the agricultural and food sector. Cheese is a product with an animal origin and is elaborated within the agricultural sector. Storage and distribution services of this product of class 39, are also within said sector, since they are specially aimed at preserving and selling cheese. By virtue of these considerations, we order the community trademark to be invalidated for all the goods and services.”

25. GOODS / SERVICES CAUGHT BY THE PROHIBITION OHIM Opp. Div.’s Decision of 16/3/2012, B 1730814 CTM applied for: Class 43: ‘Services for providing food and drink; restaurants, bars and cocktail bar services; catering services; stores administering of food and drink indoor or take away; food & Beverage services; sandwich bars, snack bars’. Opposition based on earlier PGI “Café de Colombia”. “It follows from Article 14(1) Regulation No 510/2006 that an application for registration of a trademark shall be refused if at least one of the situations referred to in Article 13 of the same regulation applies and if the application relates to the same class of product”. “even if a certain link may be found between the above-mentioned goods and services, given that coffee may be consumed in restaurants, bars and cafés, the opponent’s goods and the applicant’s services do not belong to “the same class of product” in the sense of Article 14(1) Regulation No 510/2006”.

26. GOODS / SERVICES CAUGHT BY THE PROHIBITION ¿Are GIs protected against unauthorized use for distinguishing linked services? Ex officio rejection of applied TMs, 7(1)(j) and (k) CTMR: (j) trade marks for wines which contain or consist of a geographical indication identifying wines or for spirits which contain or consist of a geographical indication identifying spirits with respect to such wines or spirits not havingthatorigin; (k) trade marks which contain or consist of a designation of origin or a geographical indication registered in accordance with Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs when they correspond to one of the situations covered by Article 13 of the said Regulation and regarding the same type of product, on condition that the application for registration of the trade mark has been submitted after the date of filing with the Commission of the application for registration of the designation of origin or geographical indication.

27. GOODS / SERVICES CAUGHT BY THE PROHIBITION Via opposition: • Only Art. 14 of Reg. 1151/2012 (relation between TMs and GIs) requires the TM to relate to a product of the same type: Where a designation of origin or a geographical indication is registered under this Regulation, the registration of a trade mark the use of which would contravene Article 13(1) and which relates to a product of the same type shall be refused if the application for registration of the trade mark is submitted after the date of submission of the registration application in respect of the designation of origin or the geographical indication to the Commission. • Art. 13 of Reg. 1151/2012 (protection of the GI): (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;

28. GOODS / SERVICES CAUGHT BY THE PROHIBITION • Recital 32 of Reg. 1151/2012: Protection of designations of origin and geographical indications should be extended to the misuse, imitation and evocation of the registered names on goods as well as on services in order to ensure a high level of protection and to align that protection with that which applies to the wine sector. • Exception to the principle of specialty?

29. Thank you for your attention