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The present and future of the interaction between trade marks and geographical indications in Community law

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Abstract

It is to remedy a totally-inadequate normative framework that the OHIM and the Commission have recently taken initiatives aimed at clarifying the relationship between geographical indications and trade marks. It is, indeed, necessary to provide a simpler and more legible legal framework. As regards absolute grounds for refusal, the OHIM has begun a trend that the Commission wishes to be confirmed: namely that trade marks should be examined in accordance with the provisions stipulated for this purpose in the European Regulations about geographical indications. As regards, on the other hand, relative grounds for refusal, the Commission does not succeed in its draft amendment of trade mark law in consolidating its good intentions.

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Notes

  1. “Intellectual property rights intensive industries: contribution to economic performance and employment in the European Union”, study published in 2013 by the European Observatory on Infringements of Intellectual Property Rights and the European Patent Office.

  2. Council Regulation (EEC) No. 1601/91 of 10 June 1991 laying down general rules on the definition, description and presentation of aromatized wines, aromatized wine-based drinks and aromatized wine product cocktails, OJEU No. L 149 of 14 June 1991.

  3. Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trade mark (codified version), OJEU L 78/1 of 24 March 2009.

  4. Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (Codified version), OJEU L 299/25 of 08 November 2008.

  5. Regulation (EU) No. 1151/2012 of the European Parliament and of the Council of 21 November 2012 on Quality Schemes for Agricultural Products and Foodstuffs, OJEU L 343 of 14 December 2012.

  6. Regulation (EU) No. 1308/2013 of the European Parliament and of the Council of 17 December 2013 establishing a common organisation of the markets in agricultural products and repealing Council Regulations (EEC) No. 922/72, (EEC) No. 234/79, (EC) No. 1037/2001 and (EC) No. 1234/2007.

  7. Council Regulation (EC) No. 1234/2007 of 22 October 2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation), OJEU L 299, 16 November 2007.

  8. Regulation (EC) No. 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 and repealing Council Regulation (EEC) No. 1576/89, OJEU L 39, 13 February 2008.

  9. The Manual Concerning Proceedings Before the Office For Harmonization In The Internal Market (Trade marks And Designs) Part B Examination Section 4 Absolute Grounds For Refusal And Community Collective Marks, 1.1.1.

  10. These are decisions made by the 4th Appeals Chamber on 19 June 2013 in the case R 1546/2011-4 FONT DE LA FIGUERA and 1 July 2013 in the case R 257/2012-4 HACIENDA ZORITA DUERO VALLEY.

  11. See in particular the Commission Regulation (EC) No. 607/2009 of 14 July 2009 laying down certain detailed rules for the implementation of Council Regulation (EC) No. 479/2008 as regards protected designations of origin and geographical indications, traditional terms, labelling and presentation of certain wine sector products, and its Article 41, Relationship with trade marks: “1. Where a traditional term is protected under this Regulation, the registration of a trade mark, which corresponds to one of the situations referred to in Article 40, shall be refused if the application for registration of the trade mark does not concern wines qualified to use such a traditional term and is submitted after the date of submission of the application for protection of the traditional term to the Commission and the traditional term is subsequently protected”.

  12. Decision of the Fifth Board of Appeal of 17 May 2013 in case R 757/2012-5, Federación Nacional de Cafeteros de Colombia–v-Nadine Hautrive, “Colombiano House”.

  13. An appeal is currently pending before the General Court, as T-387/13.

  14. Decision of the Second Board of Appeal of 23 November 2011 in case R 1497/2010-2, Société Civile du Château d’Yquem–v-Consejo Regulador de la Denominación de Origen Yecla.

  15. For more details, see Benjamin Fontaine, Geographical Indications and the Community Trade Mark System, E.G.Y.P., 2012, p. 134s.

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Authors and Affiliations

  1. Geographical Indications Committee, European Communities Trade mark Association (ECTA), Brussels, Belgium

    Benjamin Fontaine

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  1. Benjamin Fontaine
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Correspondence to Benjamin Fontaine.

Additional information

This article is based on a presentation given at ERA’s Annual Conference on Trade Marks and Designs in Europe 2013 which took place on 7–8 November 2013 in Alicante.

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Fontaine, B. The present and future of the interaction between trade marks and geographical indications in Community law. ERA Forum 15, 183–196 (2014). https://doi.org/10.1007/s12027-014-0347-y

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