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European case law and theWTO ruling on conflicts between geographical indications and trademarks 1 Introduction

Geographical indications (hereinafter referred to as GIs) are geographical or traditional

names which identify a good as originating in a particular territory, where a

This paper is the written version of the presentation given by the author at the ERA conference on

―Recent developments in European intellectual property law‖, held in Trier on 1–2 December 2008.

A word of appreciation and thanks for suggestions and encouragement during work on this article is

due to Bernard O‘Connor, senior partner of O‘Connor and Company, and Florence Hartmann-Vareilles, Head of the ―European Business Law‖ Section at the Academy of European Law in Trier.

given quality, reputation or other characteristics of the good are essentially attributable

to its geographical origin. Examples of such indications are Parmigiano Reggiano, Roquefort, Irish Whiskey, Manchego, Cognac, Teruel and Parma hams, Feta cheese, Tuscany olives and many other well known names of foods in Europe. The main function of GIs is to identify the origin of goods and expressly note the specific qualities which are due to the geographical origin. Evidently, this helps in differentiation of the products among similar goods and their identification as specific quality products on the market. For these reasons geographical indications are

recognised as a valuable tool for achievement of rural and social development goals. Besides, they address quality concerns and provide marketing opportunities for traditional

products. Their economic benefits cannot be underestimated; GIs help producers to obtain premium prices for their products, guaranteeing at the same time safety and quality of products to consumers. By acquiring recognition, GIs are increasingly becoming known as traditional quality products from specific regions. GIs have a long history in Europe and are of particular importance for the European Union at present.1

Council Regulation 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs2 is central in the EC legal framework for the protection of GIs. The protection of geographical indications for wines in the EC is regulated by Council Regulation 479/2008 of 29 April 2008 on the common organisation of the market in wine,3 which lays down the rules and standards

for designations of origin and geographical indications for wines. With respect to wines, Commission Regulation 753/2002 of 29 April 2002 on the description, designation

and protection of certain wine sector products is also relevant, as it lays down

the rules for the labelling of wine.4 Regulation 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks deals with the use of geographical names for spirits.5

There have been a number of disputes concerning the provisions of the above

mentioned European regulations involving geographical indications. The major issues concerned generic character of registered and protected names,6 the use of parts

of compound geographical indications,7 definition of geographical area of protection of GI products,8 particularities of specifications9 and various others.10 However, without doubt, the most extensive European case law concerns conflicts between geographical

indications and trademarks. This article, therefore, reviews the cases dealt

with by the European Court of Justice involving conflicts between geographical indications

and trademarks and inquires into the WTO dispute, which examined relevant EU provisions on GIs and trademarks.

2 Interface between geographical indications and trademarks

In performing their function of identification of goods, geographical indications, in spite of being recognised as a separate intellectual property type, are often linked with trademarks, particularly because in a number of WTO members GIs are protected as trademarks.11

Trademarks, similar to geographical indications, serve for identification of goods. Their main purpose is to distinguish the goods or services of one undertaking from goods or services of another undertaking. However, even though there are some similarities

between geographical indications and trademarks, they are different legal concepts. Besides, geographical indications and trademarks play a different role with regard to development of rural communities and information transmitted to consumers. The possibility of conflict between geographical indications and trademarks is recognised both in national and international law. As to the international treaties, few of them regulate expressly the relationship between trademarks and geographical indications.12 Only one, the TRIPS Agreement, deals comprehensively with both types of intellectual property rights in the same instrument.

The EU legislation also devotes attention to the issue in question. Regulation

510/200613 Article 14 helps to regulate the problems arising when a trademark that includes a geographical name clashes with a protected geographical indication or a protected designation of origin.14 The Regulation distinguishes between three situations.

The simplest case is the first one, referred to in Article 14.1 of the Regulation. Any application for a conflicting trademark for the same type of product made after the date of application for protection of the geographical name at Community level will be refused. In this case, the regulation gives priority to the geographical name. The second case, referred to in Article 14.2 of the Regulation, provides for coexistence

in certain cases. However, a conflicting trademark can only continue to be used in accordance with Community law if:

– the trademark was applied for, registered or established by use in good faith before the date of protection in the country of origin or the date of submission to the Commission

of the application for registration of the protected geographical indication or protected designation of origin;

– there are no grounds for invalidity or revocation of the trademark under applicable Community legislation.

The third situation is different. In case of conflicts between registered trademarks and geographical indications, the registration of the latter is not allowed if it would mislead the consumer in light of a trademark‘s reputation and the length of time it has been used.15 As an illustration of this situation, consider a hypothetical example of application for registration of ―Guinness‖ beer from the little village of Guinness in France. Such an application would be refused in light of the protection of the Irish trademark ―Guinness‖.16

3 The European case law involving conflicts between geographical indications and trademarks

The European case law on conflicts between geographical indications and trademarks is the most extensive. This is not surprising, considering that even during the negotiations

of the WTO TRIPS Agreement the issue of geographical indications and

trademarks was the most contentious. These negotiations might have been influenced by the famous ?Torres? case. In this case, the ―Miguel Torres‖ trademark had been registered in Spain and used for wine for many years. The Portuguese government declared ―Torres Vedras‖ a geographical indication, which, under a European Commission

regulation on wine, would have resulted in prohibiting the use of the ―Miguel Torres‖ trademark since it was in conflict with a geographical indication. As a consequence

of this case, the European Commission subsequently amended its regulation to allow the co-existence of both the geographical indication and the trademark. 3.1 The Austrian ?Cambozola‘ cheese case17

The Italian Consorzio per la Tutela del Formaggio Gorgonzola brought proceedings against K?serei Champignon Hofmeister GmbH & Co. KG and Eduard Bracharz GmbH (Austria) prohibiting the marketing in Austria of a blue cheese under the designation

?Cambozola? and requiring cancellation of the ?Cambozola? trademark. The

applicant referred to Article 3 of the International Stresa Convention for the Use of Designations of Origin and Names of Cheeses,18 which provided that only “cheese manufactured or matured in traditional regions, by virtue of local, loyal and uninterrupted

usages” may benefit from designations of origin governed by national legislation.

Article 1 of the Convention also prohibited the use of descriptions which contravene that principle. Article 2 of the Agreement between the Austrian Government and the Italian Government on geographical designations of origin and names of certain

products, signed in Rome on 1 February 1952, prohibited the importation and

sale of all products bearing, or displaying on their packaging or in their trademarks, designations and names listed in the annex, which were liable to mislead the public as to the origin, variety, nature or specific qualities of those products or goods. The European Court of Justice ruled that the principle of free movement of goods does not preclude Member States from taking the measures incumbent upon them in order to ensure the protection of designations of origin registered under Council Regulation 2081/92. Use of a name such as ?Cambozola? might therefore be deemed, for the purposes of Article 13(1)(b) of that Regulation, to evoke the protected designation

of origin ?Gorgonzola?, irrespective of the fact that the packaging indicates the product‘s true origin.

The European Court of Justice ruled that it is for the national court to decide

whether, on the facts, the conditions laid down in Article 14(2) of Regulation 2081/92 allow use of an earlier trade mark to continue notwithstanding the registration of the protected designation of origin ?Gorgonzola?, having regard in particular to the law in force at the time of registration of the trademark, in order to determine whether such registration could have been made in good faith, on the basis that use of a name such as ?Cambozola? does not, per se, constitute an attempt to deceive the consumer. 3.2 Misleading labels on the beer in the ?Warsteiner‘ case19

Warsteiner Brauerei (a German beer producer and the owner of the trademark

?Warsteiner?) had run a brewery inWarstein in Nordrhein-Westfalen, Germany, since 1753. In autumn 1990, Warsteiner Brauerei acquired a brewery located in Paderborn, 40 km from Warstein, where it brewed ?Light? and ?Fresh? type beers until the end of 1991. The labels on the front of the bottles for these beers bore inter alia the name ?Warsteiner? or ?Marke Warsteiner? (?Warsteiner Brand?). The back labels indicated inter alia that the beers were brewed and bottled “in unserer neuen Paderborner Brauerei” (―in our new Paderborn Brewery‖).

The Schutzverband gegen Unwesen in der Wirtschaft, an association founded to combat unfair competition, thought that these labels were misleading and brought an action against Warsteiner Brauerei before the Landgericht (Regional Court),

Mannheim, seeking an injunction, pursuant to Paragraph 3 of theUWG (Gesetz gegen den unlauteren Wettbewerb—Law against Unfair Competition), restraining it from using ?Warsteiner? as a geographical indication of source for beer brewed in Paderborn.

The Landgericht prohibited the defendant from offering for sale, distributing and/or putting into circulation beer with the offending labels. On appeal, the Oberlandesgericht

(Higher Regional Court), Karlsruhe, quashed the judgment of the

Landgericht and dismissed the action of the Schutzverband. The dispute finally came

before the Bundesgerichtshof.

relationship between the national legislation and the Regulation. The Court acknowledged

that Council Regulation 2081/92 did not preclude the application of national

legislation which prohibits the potentially misleading use of a geographical indication of source in cases where is no link between the characteristics of the product and its geographical provenance.

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