ECTA – Trade Marks and Geographical Indications
“Protection of Geographical Indication – A practical point of view”
Emmanuel Baud
SLIDES 1 & 2
Introduction:
1. Importance of the name of locations
A trader, a producer or a manufacturer might want to use or refer to the name of a
location or a region (a geographical indication) which conveys some positive or
prestigious meaning to accompany the promotion or sale of a product. They may
further wish to appropriate such name by registering it as a trade mark. Such
commercial practices might, under certain circumstances, be considered as
unlawful when the law grants to geographical names a specific protection.
2. Definition of “Geographical Indication”
The term “geographical indication”, in international and European regulations,
encompasses different concepts used in order to protect geographical names -whether registered or not -- , and comprising, inter alia :
¾ geographical indication, as defined in the Agreement on Trade-Related
Aspects of Intellectual Property Rights, Art. 22: “geographical indications
are, for the purposes of this Agreement, indications which identify a good as
originating in the territory of a Member, or a region or locality in that
territory, where a given quality, reputation or other characteristic of the good
is essentially attributable to its geographical origin”,
SLIDE 3
The definition is relatively similar in other applicable regulations:
¾ geographical indication and designation of origin, as defined in Council
Regulation No 510/2006 of 20 March 2006 on the protection of
geographical indications and designations of origin for agricultural products
and foodstuffs1 :
•
Art. 2 : “geographical indication: means the name of a region, a
specific place or, in exceptional cases, a country, used to describe
an agricultural product or a foodstuff: originating in that region,
specific place or country, and which possesses a specific quality,
reputation or other characteristics attributable to that geographical
origin and the production and/or processing and/or preparation of
which take place in the defined geographical area”,
•
Art. 2: “designation of origin: means the name of a region, a specific
place or, in exceptional cases, a country, used to describe an
agricultural product or a foodstuff: originating in that region, specific
place or country, and the quality or characteristics of which are
essentially or exclusively due to a particular geographical
environment with its inherent natural and human factors, and the
production, processing and preparation of which take place in the
defined geographical area”,
¾ geographical indication and designation of origin, as defined in Council
Regulation No 479/2008 of 29 April 2008 on the common organization of
the market in wine:
•
1
Art. 34: “geographical indication means an indication referring to a
region, a specific place or, in exceptional cases, a country, used to
describe a product referred to in Article 33(1) which complies with
the following requirements: (i) it possesses a specific quality,
reputation or other characteristics attributable to that geographical
origin; (ii) at least 85 % of the grapes used for its production come
exclusively from this geographical area; (iii) its production takes
place in this geographical area (iv) it is obtained from vine varieties
belonging to Vitis vinifera or a cross between the Vitis vinifera
species and other species of the genus Vitis”,
Replacing the protected designation of origin and protected geographical indication for agricultural
products and foodstuffs created by Council Regulation No 2081/92 of 14 July 1992.
Protection of Geographical Indication – A practical point of view
Emmanuel BAUD
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•
Art. 34: “designation of origin means the name of a region, a specific
place or, in exceptional cases, a country used to describe a product
referred to in Article 33(1) that complies with the following
requirements: (i) its quality and characteristics are essentially or
exclusively due to a particular geographical environment with its
inherent natural and human factors; (ii) the grapes from which it is
produced come exclusively from this geographical area; (iii) its
production takes place in this geographical area; (iv) it is obtained
from vine varieties belonging to Vitis vinifera”,
¾ geographical indication, as defined in Council Regulation No 110/2008 of
15 January 2008 on the definition, description, presentation, labelling and
the protection of geographical indications of spirit drinks and repealing
Council Regulation (EEC) No 1576/89, Article 15: “for the purpose of this
Regulation a geographical indication shall be an indication which identifies
a spirit drink as originating in the territory of a country, or a region or locality
in that territory, where a given quality, reputation or other characteristic of
that spirit drink is essentially attributable to its geographical origin,
¾ appellation of origin, as defined in the Lisbon Agreement for the Protection
of Appellations of Origin and their International Registration of October 31,
1958, as revised at Stockholm on July 14, 1967, and as amended on
September 28, 1979, Art. 2: “appellation of origin means the geographical
name of a country, region, or locality, which serves to designate a product
originating therein, the quality and characteristics of which are due
exclusively or essentially to the geographical environment, including natural
and human factor”
Protection of Geographical Indication – A practical point of view
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SLIDE 4
3. Dissenting interests
Dissenting interests are at stake namely those of:
¾ producers, whose location is famous for a specific type of product,
¾ traders, which may want to register the name of a location as a trade mark
to benefit from the prestige associated therewith,
¾ consumers, which shall not be deceived as to the origin of the products they
intend to buy.
Protection of Geographical Indication – A practical point of view
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SLIDE 5
4. Overview
We shall attempt to provide you with a general overview of the legal instruments
available to the holders of geographical indications (being a producer of the goods
protected by a geographical indication or the entity in charge of protecting and
defending such geographical indication --such as the BNIC (Bureau National
Interprofessionnel du Cognac ), the CIVC (Comité Interprofessionnel du Vin de
Champagne), etc.--) against illegitimate use and more particularly:
¾ to prevent a trade mark application similar/identical to a geographical
indication from being registered,
¾ to prevent the use -- as a trade mark and/or in the course of trade -- of a
term similar/identical to a geographical indication.
Protection of Geographical Indication – A practical point of view
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SLIDE 6
1.
PREVENTING
THE
REGISTRATION
OF
TRADE
SIMILAR/IDENTICAL TO A GEOGRAPHICAL INDICATION
MARKS
The provisions of the French Intellectual Property Code (“FIPC”) relating to trade
mark law provide with a guideline as to the conditions under which a geographical
name can be registered as a trade mark.
1.1
•
French rules regarding trade mark applications using a term
similar/identical to a geographical indication
Article L. 711-1 of the FIPC: signs which can be registered
“the following, in particular, may constitute such a
sign: a) Denominations in all forms, such as: words,
combinations of words, surnames and geographical
names”
However, in order to be registered as a trade mark, a geographical name must
comply with the provisions of Articles L. 711-2, L. 711-3 and L. 711-4 of the FIPC.
•
Article L. 711-2 of the FIPC: the geographical name must be distinctive and not
descriptive:
“the following shall not be of a distinctive nature: b)
Signs or names which may serve to designate a
feature of the product, particularly the type, quality,
quantity, purpose, value, geographical origin [of the
product]”
•
Article L. 711-3 of the FIPC: the geographical name must not be deceiving:
“the following may not be adopted as a mark or an
element of a mark: c) Signs which can mislead the
public, particularly as regards the nature, quality or
geographical origin of the goods or services”
Protection of Geographical Indication – A practical point of view
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•
Article L. 711-4 of the FIPC: the geographical name must not infringe a prior
right:
“signs may not be adopted as marks where they
infringe earlier rights, particularly: (Copyright,
Trademark…) d) A protected appellation of origin”
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SLIDE 7
1.2
Actions against French trade mark applications similar/identical to a
geographical indications
1.2.1
Legal basis for opposition before the INPI
Pursuant to Article L. 712-4 of the FIPC :
“(…) opposition to an application for registration may be entered with
the Director of the National Institute of Industrial Property by the owner
of a mark that has been registered or applied for at an earlier date or
which enjoys an earlier priority date or by the owner of an earlier wellknown mark”.
Accordingly, the holder of a geographical indication is not entitled to bring
opposition proceedings before the Director of the National Institute for Industrial
Property. Yet, it may be aware of an application that, according to him, infringes
his rights.
For instance, the holder of the geographical indication Sauternes may be aware
that a trade mark application under the name “Royal Sauternes” has been filed for
a cheap sparkling wine manufactured in the US.
1.2.2
Legal basis for observations before the INPI
Article L. 712-3 of the FIPC provides that:
“during a period of two months following publication of the application
for registration, any concerned person may submit observations to the
Director of the National Institute of Industrial Property”
In the absence of any formal requirement as to the comments being sent (which
are rarely taken into account), the holder of a geographical indication may put
forward:
¾ The inconsistency of the application pursuant to Article L. 711-3 of the FIPC
(contending that the application is deceiving),
¾ The inconsistency of the application pursuant to Article L. 711-4 of the FIPC
(asserting that the application is infringing the geographical indication),
Protection of Geographical Indication – A practical point of view
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¾ The inconsistency of the application pursuant to Article L. 643-1 of the French
Rural Code (arguing that the application affects the reputation of the geographical
indication),
¾ The inconsistency of the application pursuant to Article L. 213-1 of the French
Consumer Code (alleging that the application is misleading for the consumer).
1.3
Actions against Community trade mark applications similar/identical
to a geographical indications
1.3.1
Legal basis
Pursuant to Article 8.4 of Council Regulation (EC) No 207/2009 of February 26,
2009, on Community trade marks (which repealed Council Regulation (EC) No
40/94) :
“upon opposition by the proprietor of a non-registered trade mark or of another sign used
in the course of trade of more than mere local significance, the trade mark applied for
shall not be registered where and to the extent that, pursuant to the Community legislation
or the law of the Member State governing that sign: (a) rights to that sign were acquired
prior to the date of application for registration of the Community trade mark, or the date of
the priority claimed for the application for registration of the Community trade mark; (b)
that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark”
On the ground of Council Regulation (EC) 40/94, (the European Court of First
Instance confirmed that a geographical indication can constitute an anteriority i.e.
a sign used in the course of trade (TPICE, June 12, 2007; TPICE, December 16,
2008, “Bud”).
In the “Bud” case, the TPICE clarified the conditions under which a geographical
indication could constitute an anteriority in order to challenge a community trade
mark application:
(a)
“used in the course of trade” does not refer to a “genuine use”
(“usage sérieux”). The decision of the Board of Appeal, which
considered that there was no evidence of a “genuine use” -- as it is
provided for in Article 43.2 of Regulation (EC) No 40/94 (relating to
Community trade mark opposition) -- was therefore dismissed. Mere
commercial use for products is enough.
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(b)
“more than mere local significance” refers to the significance of the
sign concerned and not to the significance of its use. Indeed,
contrarily to the Board of Appeal’s decision, which held that the use,
in France, of an appellation of origin registered under the Lisbon
Agreement was “insufficient to establish the existence of a right of
more than merely local significance”, the TPICE considered that
such earlier rights “have a significance which is not merely local
inasmuch as their protection, under Article 1(2) of the Lisbon
Agreement (…) extends beyond their territory of origin”.
(c)
“that sign confers on its proprietor the right to prohibit the use of a
subsequent trade mark” shall not impose to the holder of the
geographical indication to prove that it could have prevented the use
of a trade mark, but solely that it owns such a right.
On March 24, 2009, the TPICE ruled on the law to be applied when applying
Article 8.4 (TPICE, march 24, 2009, T-318/06 to T-321/06, Alberto Jorge Moreira
da Fonseca c/ OHMI and General Optica, SA) :
(a)
the criteria concerning the use of the sign “in the course of trade”
and of “more than mere local significance” are to be interpreted in
accordance with community law. The judges considered that
Regulation No 40/94 thus sets out uniform standards, relating to the
use of signs and their significance, which are consistent with the
principles underlying the system established by that regulation.
(b)
By contrast, the judges held that it is apparent from the phrase
“where and to the extent that, pursuant to the law of the Member
State governing that sign”, that the other two conditions, namely (i)
“prior to the date of application for registration of the Community
trade mark (…)” and (ii) the fact that the “sign confers on its
proprietor the right to prohibit the use of a subsequent trade mark”),
constitute conditions laid down by the regulation which, unlike the
conditions above, must be assessed in the light of the criteria set by
the law governing the sign relied on. The TPICE considered that
“only the law which governs the sign relied on can determine
whether that sign predates the Community trade mark and whether it
can justify a prohibition of the use of a subsequent trade mark”.
Protection of Geographical Indication – A practical point of view
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SLIDE 8
1.3.2
Case law
(a)
KONYAGI
The French Bureau National Interprofessionnel du Cognac brought opposition
proceedings before the Office of Harmonization of the Internal Market (“OHIM”),
contesting the trademark application “KONYAGI” filed on classes 25, 32 and 33.
The OHIM noted that:
¾ “the notoriety or reputation of the geographical indication “COGNAC” is a
notorious fact”
¾ “the appellation of origin “COGNAC” clearly enjoys a very high level of
reputation all over the world”.
Consequently, the OHIM came to the conclusion that “the opponent successfully
proved that his appellation of origin enjoys reputation in France and that, therefore,
French national law and Community law vest him an exclusive right in the
appellation of origin “COGNAC” that would prevent the use of the applicant’s trade
mark for the goods included in the application”. (OHIM, decision No 2320/2004 of
July 15, 2004).
(b)
CUVEE PALOMAR
In a very recent case (Case T 237/08 of May 11, 2010) the General Court (a
branch of the Court of Justice of the European Union) gave a similar ruling in a
case involving an indication of origin for wines.
In 2006 the owner of the Pago Palomar estate, applied to register as a Community
trade mark the words “CUVÉE PALOMAR” for wines in class 33. The application
was refused by the examiner under Article 7(1)(j) of the Community Trademark
Regulation which is as follows:
“The following shall not be registered: … (j) trade marks for wines which
contain or consist of a geographical indication identifying wines (…) with
respect to such wines (…) not having that origin”
The appeal it lodged was further dismissed by the Board of Appeal, which stated
that “el Palomar” was the name of a local administrative area in Spain and that it
constituted, under applicable Community and national law, an area of production
protected by the registered designation of origin “Valencia”.
Protection of Geographical Indication – A practical point of view
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The Board of Appeal added that there was a high degree of similarity between the
applied-for trademark and the local administrative area name “el Palomar” and that
the use of the word “palomar” being included in the mark applied for, was
prohibited since the applied-for Community trade mark had not been sought to
designate wines from that area of origin. The Board of Appeal concluded that the
registration of the Community trademark applied for to designate wines should be
refused under Article 7(1)(j) since it contained a false geographical indication.
The decision was confirmed on similar grounds by the General Court.
(c)
CHAMPAGNE AND ROSES
Recently, the Comité Interprofessionnel du Vin de Champagne” obtained the
dismissal of the trademark “CHAMPAGNE AND ROSES” (OHIM, decision No
949/984 of January 27, 2010), applied for goods in classes 9 and 28 (notably
games).
The OHIM held that the senior right “Champagne”, which is a protected
geographical indication pursuant to French Law, was similar to the trademark
application applied for: “Champagne and roses”.
Furthermore, the judges considered that the senior trademark had a high degree
of prominence, which appears rarely. They held that “Champagne” takes such top
position that it embodies exclusiveness. Consequently, a dilution and weakening
of the distinctiveness of the protected indication of origin must be feared.
Finally, although the respectively claimed goods fall under sectors that are not
closely connected, the outstanding prominence of the senior right “Champagne”
weighs more heavily, so that the opposition was granted to its full extent.
1.4
Foreign decisions regarding trade mark applications similar/identical
to a geographical indication
In certain countries, the owners of a geographical indication are granted the right
to file opposition proceedings against a trademark application.
For instance, the CIVC has acted in various countries against trademark
applications bearing the term “Champagne”. One case which involved opposition
proceedings in many countries was the application “STRAWBERRIES &
CHAMPAGNE” filed by “Victoria’s Secret” in class 3 (cosmetic products).
Opposition proceedings were successful on the basis of their respective
regulation:
Protection of Geographical Indication – A practical point of view
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•
before the Danish patent and trademark office, which considered that
“Champagne is well known to such an extent that the sign enjoys an
extensive protection in Denmark beyond the criteria of identity of goods”
and consequently (i) sustained the opposition and (ii) cancelled the entire
registration of the trademark application “STRAWBERRIES &
CHAMPAGNE” filed by “Victoria’s Secret”,
•
before the Doha trademark office (Qatar), since “the second part of the
name includes the name “Champagne”, which is a famous geographical
indication in the field of wines. Consequently the registration of which is not
allowed except to the producers from the area known in the name of
“Champagne” and for the same products which are under monitoring of the
INAO (now: INOQ)”,
•
before the trademark department of the Turkish patent institute, which held
that “as a result of the review and evaluation (of the petition), it was
determined that said trademark is a geographical indication and therefore
(…) it was decided to reject the objected trademark application”,
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SLIDE 9
2.
PREVENTING THE USE OF TERMS SIMILAR/IDENTICAL TO A
GEOGRAPHICAL INDICATION
2.1
French law
2.1.1
Claims based on the ground of lack of distinctiveness and descriptiveness :
Article L. 711-2 of the FIPC :
“the following shall not be of a distinctive nature: b)
Signs or names which may serve to designate a
feature of the product or service, particularly the
type, quality, quantity, purpose, value, geographical
origin”
With regards to distinctiveness, French courts ruled that, provided the
geographical name is neither a designation of origin, nor an indication of
provenance, the geographical name can be registered (Paris Court of Appeal, 6
mai 1981, “Verrerie de Biot”, Ann. Prop. Ind. 1981. 7).
Furthermore, you should be aware of the fact that, when the geographical name
applied for is a complex trade mark and even though it comprises a geographical
indication, it can be registered -- by a beneficiary of the indication of origin --,
provided there exists elements which provide a distinctive character to the trade
mark (Cass. Com. September 21, 2004):
2.1.2
Claims arguing the deceiving character of the geographical indication so as
to protect the consumer as to the likely origin of a product:
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• Article L. 711-3 of the FIPC:
“the following may not be adopted as a mark or an
element of a mark: c) Signs which may mislead the
public, particularly as regards the nature, quality or
geographical origin of the goods or services”
•
Article L. 121-1 of the French Consumer Code provides that “a commercial
practice shall be regarded as misleading if it is committed in one of the
following circumstances: (…) 2° when it rests upon allegations, indications
or presentations that are false or likely to deceive and is related to on or
many of the following: (…) (b) the main characteristics of the product, such
as (…) geographical or commercial origin (…)”.
The following trade marks were found to be misleading since they referred to a
place which name is associated to a particular activity, such as:
¾ “Cirque de Monaco” for shows since it evocates the Monaco International
Circus Festival whereas such trade mark did not have any connection with
such Festival (Paris Court of Appeal, December 17, 2003, Ann. Prop. Ind.
2004, p. 23).
¾ “Bologna” for French pasta (Paris Court of Appeal, June 3, 1981, PIBD
1981, III, p. 217),
¾ “Milwaukee Company” for clothes not manufactured in the United States
(Paris Court of Appeal, December 2, 1986, PIBD 1987, III, p. 182),
¾ “Truffes du Périgord”, together with the indication “Produit français”, for
truffles elaborated from Spanish ingredients (Paris Court of Appeal, January
20, 1999, D., 1999, I.R, p. 83).
It is however not the case when the geographical name cannot be reasonably
contemplated as a name designating the geographical origin of the product, for
example:
¾ “Havannah” for beers (Colmar Court of Appeal, September 21, 2004, PIBD
2004, III, p. 674),
¾ “Versailles” for chocolate (Paris Court of Appeal, March 9, 2005, PIBD
2005, III, p. 345),
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¾ “Zanzibar” for perfumes (Paris First Instance Court, April 25, 2003, PIBD
2003, III, p. 348),
¾ “Cirque de Pékin” for entertainment services (Paris Court of Appeal,
March 5, 2004).
2.1.3
Claims asserting that the trade mark infringes a geographical indication:
Article L. 711-4 of the FIPC sets forth :
“signs may not be adopted as marks where they
infringe earlier rights, particularly: d) A protected
appellation of origin”
Furthermore, Article L. 643-1 of the French Rural Code is as follows:
“the geographical name which constitutes the
appellation d’origine or any other wording evoking said
mark, may not be used for any similar product, without
prejudice to legislative or regulatory provisions in force
on 6 July 1990, nor for any other product or service
where this use is likely to divert for its own benefit or
diminish/lessen the reputation of the appellation
d’origine”.
This provision applies:
•
to the name of the geographical indication or to a name which
evokes it, i.e. a similar name,
•
to similar products, without conditions,
•
to dissimilar products or services, provided the use is susceptible to
divert for its own benefit or diminish the reputation of the
geographical indication:
o In that respect, French judiciary ruled that “the law does not
require the proof that the use actually diverts for its benefit or
diminishes the reputation of the geographical indication, but
only that such effects are susceptible to occur” (Paris First
Instance Court, October 12, 2001, PIBD 2001, III, p. 173).
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As a result of the application of these provisions, the holders of the appellation of
origin “Champagne” have successfully acted and obtained the cancellation of
trade marks bearing the name “Champagne” such as:
•
“Champagne”, which Yves Saint Laurent had registered for a
perfume. The Paris Court of appeal ruled that “the registration had
only been done in order to capture the fame and prestige of the
appellation of origin” (Paris Court of appeal, December 15, 1993,
JCP E, 540, p. 27),
•
“C’EST DU CHAMPAGNE” and “C’EST AUSSI DU CHAMPAGNE”,
for clothes. The Paris First Instance Court decided that “an
appellation of origin, which is commanded by the geographical place
where is originated the product (…) constitutes a collective asset
owned by all the persons which products fulfill certain conditions;
such appellation of origin cannot be sold or captured by one person
via a registration as a trade mark” (Paris First Instance Court, May 7,
1997, RG n° 860/97),
•
“BAIN DE CHAMPAGNE” and “ROYAL BAIN DE CHAMPAGNE”,
for perfumes. The French Supreme Court held that “the legal status
of the appellation of origin is public policy and prohibits any private
appropriation” (Cass. com., February 18, 2004, PIBD 2004, III, p.
331),
•
“CHAMPAGNE ET CONFETTIS” for tour operators (Paris First
Instance Court, June 24, 1997, RG N° 96/18869),
•
“BULLE DE CHAMPAGNE” for sweets/chocolates, stating that “the
applicant has diverted for its own benefit the reputation of the
geographical indication of which only the producers in Champagne
can take advantage of to sell wine entitled to such geographical
indication” (Reims First Instance Court, February 2, 1999, RG N°
97/0018),
•
“CHAMPAGNE KNIT” for clothes, on the basis that “the applicant
had tried to create an attractive effect using the prestige and luxury
image associated to the geographical indication and therefore had
tried to unduly diverted for its own benefit the fame of the
geographical indication” (Paris First Instance Court, September 8,
1999, RG N° 99/8533),
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•
“SANDWICHS ET CHAMPAGNE” for food (Paris First Instance
Court, November 19, 2002, RG N° 01/08137),
•
“RUSSIAN
CHAMPAGNE”,
“SOVIET
CHAMPAGNE”,
“SHAPANSKOE”, “SOVETSKOE SHAMPANSKOE”, “COBETCKOE
IIIAMIIAHCKOE”, “GOLD COLLECTION CHAMPAGNE” and
“NADEZHDA CHAMPAGNE” for alcolic drinks (Paris Court of
Appeal, April 25, 2007, n°06/03001),
•
“CHAMPALLAL” and “CHAM’ALLAL” for fruit beverages and fruit
juices, non alcoholic aperitifs (Paris Court of First Instance, January
27, 2009, n°08/15962),
Also note that:
“HAVANA”, for perfume, was cancelled, the judges considering that “the choice of
the term “HAVANA” (…) shows that the applicant tried to promote the prestigious
and voluptuous image associated to the cigar “Havane”” (Paris Court of Appeal,
May 17, 2000, Ann. Prop. Ind. 2000, p. 260).
In the following cases, French judges prohibited the use of terms mentioning a
geographical indication even though they were not registered as trade marks:
•
“BISCUIT CHAMPAGNE” and “BOUDOIR CHAMPAGNE” for biscuit,
on the basis that “the use of the term “CHAMPAGNE” to designate
biscuits is susceptible to diminish the reputation and to trivialize the
term “CHAMPAGNE” (Paris First Instance Court, October 13, 2000,
RG N° 99/06085),
•
“CHAMP-PAGNE.COM” (a domain name) and “CHAMP-PAGNE” for
water for domestic animals, ruling that “intellectually, the link
between the water called “CHAMP-PAGNE” and the notoriety
acquired by Champagne as a wine for celebrations is explicit since
the sale of this water for domestic animals comes with slogans such
as “your best friend deserves what is best in life. To celebrate
holidays, the birthday of your dog (…)” (Paris First Instance Court,
September 7, 2001, PIBD 2001, III, p. 169),
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•
“CHAMALAL.COM”
(a
domain
name),
“CHAMPALLAL”,
“CHAM’ALLAL”, CHAM’ALAL”, “HALAL CHAMPAGNE”, “NON
ALCOHOLIC CHAMPAGNE” (Paris Court of First Instance, January
27, 2009, n°08/15962), and any name evoking Champagne and/or
the roots “CHAMP” and “CHAM” together with:
(i)
a conditioning characteristic of Champagne wine (bottle
traditionally used for Champagne, bottled neck covered
with gold paper, cork maintained with a plate and a wire
cap) and/or with
(ii)
the image and symbols linked to the Champagne
environment (Champagne flute or goblet, cork which pops
out, etc.) (same decision: Paris Court of First Instance,
January 27, 2009),
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SLIDE 10
2.1.4
Interpretation of bilateral agreements in favor of geographical
indications: Paris Court of First Instance, April 9, 2008, n°05/10372
The CIVC had launched proceedings against the use of the terms
“CHAMPAGNE”, “DE CHAMPAGNE” and “RECETTE DE CHAMPAGNE” by a
company selling, in France, biscuits manufactured in a place called Champagne in
Switzerland (Canton of Vaud).
The infringer contended such use was lawful pursuant to a bilateral Treaty signed
in between France and Switzerland on May 14, 1974 whose Article 2 provides
that:
“if one of the denominations protected in accordance with the first
paragraph (which refers to the denominations given in Appendix “A”, in
which Champagne is mentioned) corresponds to the name of a region
or a place located outside the French territory, the denomination may be
used for products or goods manufactured in this region or in this place”
In order to prohibit the use of such term in France, the judges ruled that “it is
accepted that, according to the undisputed interpretation of this Treaty, the use of
a protected indication of provenance can apply to products which comes from a
place of a same name, where it is located outside the French territory, except if the
consumer is likely to be mistaken with regards to the real provenance of the
products”.
2.1.5
Application of French law abroad: Commercial Court of Alicante, April
17, 2008, “Bar Champagne Vs Champagne”
A bar in Spain sells alcoholic and catering products and operates under the name
“Bar Champagne” and uses the term “Champagne” in various promotional
products such as T-shirts, menus, coasters and till receipt.
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The judges applied a bilateral agreement signed in between France and Spain on
June 27, 1973 (Convention on the protection of appellations of origin, indications
of source and designations of certain products) aimed at providing with an
equivalent protection of geographical indications. According to Article 2 of this
agreement:
“the designations featuring in appendix “A” to the present agreement
remain exclusively reserved, on Spanish territory, for French products or
goods and cannot be used therein other than under the conditions laid
down in the legislation of the French Republic”.
Since “Champagne” was mentioned in Appendix “A”, the Spanish judges
considered that French law applied and notably to articles L. 643-1, L. 643-2 and
L. 643-3 of the French Rural Code.
The Court ruled that the use of the term “Champagne” was likely to weaken the
strength of the name itself since the term is being trivialized and the bar was
unduly benefiting from the aura of prestige and distinction that the protected
designation of origin conveys.
Therefore, the Court ordered the cessation of the use of the term “Champagne”
and its removal from any documentation of the defendant.
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SLIDE 11
2.2
Community law
2.2.1
Council Regulation No 510/2006 of March 20, 2006 on the protection of
geographical indications and designations of origin for agricultural products
and foodstuffs,
(a)
Article 14: preventing the registration of a trademark :
“the application for registration of a trade mark (…) relating to the same class of
products (…) shall be refused if (it) is submitted after the date of submission of the
registration to the Commission”.
(b)
Article 13.1 : unlawful use of an indication of origin :
“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 in so far as those
products are comparable to the products registered under that name or in so far as using
the name exploits the reputation of the protected name; (b) any misuse, imitation or
evocation, even if the true origin of the product 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; (c) any other false or misleading indication as to the provenance,
origin, nature or essential qualities of the product, 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 which may mislead the consumer as to the true origin of the product”.
(c)
Case law : ECJ, February 26, 2008, case C-132/05 “Parmesan” Vs
“Parmigiano Reggiano”
Following several complaints filed by economic operators, the European
Commission requested the German authorities to take action in order to prevent
the marketing in Germany of products designated as “Parmesan”, a translation of
the protected designation of origin “Parmigiano Reggiano”. The German
authorities refused, asserting, inter alia that such term had become a generic term
for hard cheese. The European Commission decided therefore to take legal action.
The ECJ reminded that the protection of a complex registered geographical
indication implies that all the components of such geographical indication be
protected against abuse and not only the exact form in which it is registered.
The ECJ held that:
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2.2.2
(i)
there is a phonetic, visual and intellectual similarity between
the names “Parmesan” and “Parmigiano Reggiano”,
(ii)
the use of the name “Parmesan” should therefore be regarded
as an evocation of the protected designation of origin
“Parmigiano Reggiano”. It is noteworthy that in this decision,
the ECJ provides with a definition of the term “evocation”
which, according to the judges, “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 brought to
his mind is that of the product whose designation is
protected”,
(iii)
the Federal Republic of Germany had failed to prove that the
name “Parmesan” has become generic.
Council Regulation No 479/2008 of April 29, 2008 on the common
organization of the market in wine,
(a)
Article 44 : preventing the registration of a trademark :
“(…) 2. Without prejudice to Article 43(2), a trademark the use of which corresponds to
one of the situations referred to in Article 45(2), which has been applied for, registered or
established by use, if that possibility is provided for by the legislation concerned, in the
territory of the Community before the date on which the application for protection of the
designation of origin or geographical indication is submitted to the Commission, may
continue to be used and renewed notwithstanding the protection of a designation of origin
or geographical indication, provided that no grounds for the trademark's invalidity or
revocation exist as specified by the First Council Directive 89/104/EEC of 21 December
1988 to approximate the laws of the Member States relating to trade marks (1) or Council
Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (2) In such
cases the use of the designation of origin or geographical indication shall be permitted
alongside the relevant trademarks.”
(b)
Article 45 : unlawful use of an indication of origin :
“1. Protected designations of origins and geographical indications may be used by any
operator marketing a wine which has been produced in conformity with the corresponding
product specification.
2. Protected designations of origins and geographical indications and the wines using
those protected names in conformity with the product specification shall be protected
against:
(a) any direct or indirect commercial use of a protected name:
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(i)
by comparable products not complying with the product specification of the
protected name; or
(ii)
in so far as such use exploits the reputation of a designation of origin or a
geographical indication;
(b) any misuse, imitation or evocation, even if the true origin of the product or service is
indicated or if the protected name is translated or accompanied by an expression such as
‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’, ‘flavour’, ‘like’ or similar;
(c) any other false or misleading indication as to the provenance, origin, nature or
essential qualities of the product, on the inner or outer packaging, advertising material or
documents relating to the wine 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.
3. Protected designations of origin or protected geographical indications shall not become
generic in the Community within the meaning of Article 43(1).
4. Member States shall take the steps necessary to stop unlawful use of protected
designations of origin and geographical indications as referred to in paragraph 2”.
2.2.3
Council Regulation No 110/2008 of January 15, 2008 on the definition,
description, presentation, labeling and the protection of geographical
indications of spirit drinks:
(a)
Article 23: preventing the registration of a trademark :
“2. With due regard to Community law, a trade mark the use of which corresponds to one
of the situations referred to in Article 16 which has been applied for, registered, or
established by use, if that possibility is provided for by the legislation concerned, in good
faith within the territory of the Community, before either the date of protection of the
geographical indication in the country of origin or before 1 January 1996, may continue to
be used notwithstanding the registration of a geographical indication, provided that no
grounds for its invalidity or revocation exist as specified by First Council Directive
89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating
to trade marks or Council Regulation (EC) No 40/94 of 20 December 1993 on the
Community trade mark.”
(b)
Article 16 unlawful use of an indication of origin :
“without prejudice to Article 10, the geographical indications registered in Annex III shall
be protected against: (a) any direct or indirect commercial use in respect of products not
covered by the registration in so far as those products are comparable to the spirit drink
registered under that geographical indication or insofar as such use exploits the reputation
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of the registered geographical indication; (b) any misuse, imitation or evocation, even if
the true origin of the product is indicated or the geographical indication is used in
translation or accompanied by an expression such as ‘like’, ‘type’, ‘style’, ‘made’, ‘flavour’
or any other similar term; (c) any other false or misleading indication as to the
provenance, origin, nature or essential qualities on the description, presentation or
labeling of the product, 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”.
General comments:
•
the drafting of these Regulations (wine and spirits) is very similar to the
one of Article 13 (1) (b) of Regulation No 510/2006,
•
under Regulation 1493/1999, the use of a geographical indication was
only protected against its use on similar products whereas now it is
protected against use for different products.
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SLIDE 12
2.3
Foreign Law
(a)
Commercial Court of Oviedo in Spain January 12, 2010 (Consortium
of Parmesan producers (Consorzio del Formaggio Parmigiano
Reggiano against ILAS)
Spanish judges held, on the basis of Article 13(1)(b) of Regulation 510/2006, that
the use, by a Spanish company ILAS of the designation “PARMESO” in relation to
grated cheese distributed under the trade mark “RENY PICOT” was made in
violation of the protected designation of origin Parmigiano Reggiano registered in
1996 because it evoked such protected designation of origin.
Accordingly, the judges granted an injunction enjoining the defendant from selling
and marketing grated cheese under the infringing name.
(b)
Swedish patent and registration Office, December 12, 2006,
“Strawberries & Champagne Vs CIVC”
The Swedish patent and registration office cancelled the registration of the
trademark “Strawberries & Champagne” applied for by the company “Victoria’s
secret” for, inter alia, soaps, perfumes an cosmetics.
It considered that the registration had been filed in “bad faith”, i.e. that the
registrant knew about the previous use of the CHAMPAGNE mark as a product
designation.
(c)
Commercial Court of Brussels, February 26, 2009, “Strawberries &
Champagne Vs Champagne”
On September 12, 2005 “Victoria’s secret” applied for the Belgium trademark
“STRAWBERRIES & CHAMPAGNE” in class 3 (mainly for cosmetic products).
The CIVC brought a claim aimed at (i) revoking the trademark and (ii) preventing
the use of the term “Champagne”.
The judges, applying Belgian law, dated July, 14, 1991 on commercial practice,
information and consumers’ protection (the “LPCC”), ruled that such use diverted
for its benefit the reputation of the geographical indication “Champagne” and was
therefore used in a manner contrary to honest commercial practices.
(d)
Columbian Court of Appeal
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I have just learned that, 3 days ago, the Bogota Court of Appeal confirmed that the
“Strawberries & Champagne” trademark, in class 3, could not constitute a valid
trademark.
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SLIDE 13
Conclusion
1. Relationship between trademarks and indication of origin is constantly evolving,
taking into account notably the new European Regulations implemented by the
Member States.
I would just like to mention a recent referral made to the Court of Justice of the
European Union on January 5, 2010 (relating to the implementation of Regulation
110/2008 of 15 January 2008 on spirit drinks in relation to Directive 89/104) by the
Bureau National Interprofessionnel du Cognac (BNIC), as to:
•
Whether Regulation 110/2008 is applicable to the assessment of the conditions for
registration of a trademark containing a geographical indication protected by that
regulation?
•
Notably if the answer to Question 1 is affirmative, whether Articles 16 and 23 of
Regulation 110/2008 may serve as a basis for refusal of a trademark which
contains a geographical indication of origin which is protected by Regulation
110/2008 and which is filed for spirit drinks whose manufacturing method and
alcohol content do not meet the requirements set for the use of the geographical
indication in question ?
2. A new trend to use geographical indications in the course of trade seems to
have developed. It consists for certain manufacturers in using and mentioning
casks that have been used in the manufacturing process of the product protected
by a geographical indication.
This is notably the case when a producer is maturing an alcoholic beverage, such
as vodka, in casks used for maturing prestigious wines bearing a famous
geographical indication and then mentioning, on the label of the new product,
messages such as: “Vodka matured in Margaux cask”, “Margaux finishing” or
“Vodka finished in a Margaux cask”.
It is not per se prohibited to mature wine in the cask used for a product bearing a
geographical indication but it would be interesting to know whether such
commercial practices may fall under the prohibition protecting geographical
indications.
*
*
*
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