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Geographical Indications and the Principles of Trade Mark Law – A Distinctly European Perspective

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Abstract

In the wake of the 2015 Revision of the Lisbon Agreement, one of the most-discussed issues was the conflict between trade marks and geographical indications. Yet one should not forget that trade marks and geographical indications are both identifiers of origin and as such should follow the same principles as apply to generic, misleading and confusing use, protection against dissimilar goods and protection as proprietary rights. These issues are further discussed in this article, whereby reference is made to a number of recent decisions most of which are published in this issue of IIC.

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Notes

  1. Geneva Act of the Lisbon Agreement as agreed on 21 May 2015 (henceforth: Revised Lisbon Agreement).

  2. European Trade Mark Directive No. 2008/95/EC of 22 October 2008, Art. 3(1)(c).

  3. European Court of Justice (now CJEU), decision of 4 May 1999, joint cases 108/97 and 107/97 – Chiemsee.

  4. General Court (previously Court of First Instance (CFI)), 15 January 2015, case T-197/13.

  5. General Court, 21 October 2014, case T-453/11. The corresponding decision of the Paris Court of Appeal, 4 April 2014, only concerned the question whether Laguiole, a location of 1,200 inhabitants, was well known in respect of certain products.

  6. http://www.wipo.int/ipadvantage/en/details.jsp?id=2621 (accessed 1 June 2015).

  7. In case the goods do not originate from that place. Authority in Europe on this issue is the Cuvée Palomar decision, CJEU, 11 May 2010, case T-237/08.

  8. Japanese trade mark No. 4955561 registered on behalf of the Ethiopian Government on 26 May 2006 for coffee originating from Ethiopia. In Japan, the Ethiopian government also managed to invalidate a registration of “Sidamo” owned by the Japan Coffee Association as misleading: IP High Court, 29 March 2011, 2080 Hanrei Jihō p. 80. The court held that the mark could not be considered descriptive owing to a lack of recognition amongst consumers that “Sidamo” was a place name. However, consumers would associate the term with high-quality coffee.

  9. Community Trade Mark No. 004348751 registered on behalf of the Government of Ethiopia on 18 March 2008 for Ethiopian coffee. The registration is inconsistent with the above Chiemsee decision in that “Sidamo” “designate(s) a place which is currently associated in the mind of the relevant class of persons with the category of goods concerned, or whether it is reasonable to assume that such an association may be established in the future”.

  10. US mark 78589307 registered on behalf of the Government of Ethiopia on 12 February 2008 for coffee.

  11. Canadian trade mark No. 0916800 (application number) registered on behalf of the Government of Ethiopia on 28 September 2005.

  12. Swiss Federal Supreme Court, 4 June 2014, 2015 GRUR Int. p. 164 – Firenza.

  13. Milan Court of Appeal, 15 May 2012, 45 IIC p. 835 (2014) – Espiritu de Cuba.

  14. A dispute involving several dozen jurisdictions: Heath (2011), p. 181.

  15. Italian Supreme Court, 19 September 2013, see this issue of IIC at doi:10.1007/s40319-015-0402-4 – Budweiser V.

  16. Italian Supreme Court, 20 September 2012, see this issue of IIC at doi:10.1007/s40319-015-0403-3 – Bayerisches Bier.

  17. English Court of Appeal, Fage UK Ltd. v. Chobani UK Ltd., 28 January 2014, see this issue of IIC at doi:10.1007/s40319-015-0407-z – Greek Yoghurt.

  18. This is, of course, a serious hurdle and may lead to consumers being confused without any remedy at hand: UK High Court, Anheuser-Busch v. Budejovicky Budvar, [1984] F.S.R. p. 413.

  19. European Court of Justice, 6 March 2006, case C-421/04.

  20. Paris Appeal Court, 25 September 2013, see this issue of IIC at doi:10.1007/s40319-015-0399-8 – Mhajeb.

  21. French Supreme Court, 3 June 2014, see this issue of IIC at doi:10.1007/s40319-015-0401-5 – Troussepinette.

  22. TGI Paris, 6 March 2014, see this issue of IIC at doi:10.1007/s40319-015-0400-6 – Garum Armoricum.

  23. TGI Paris, 6 March 2014, supra note 22 – Garum Armoricum.

  24. Garum was in fact a salty sauce made of fermented fish intestines and used in Roman times as an all-round spice (something like soy sauce to the Japanese cuisine, perhaps). Presumably a rather revolting taste.

  25. Cupuaçu is a Brazilian fruit that can be processed into fruit juice as well as butter. The company Asahi foods developed a process for the manufacture of chocolate from cupuaçu and registered (or attempted to register) the term for fruit juice. Thanks to the NGO Amazonlink, the trade mark was invalidated in Japan (decision of the Japanese Patent Office, 18 February 2004, 37 IIC p. 98 (2006), with comment by Edson Beas Rodrigues), withdrawn in the US (registration No. 2729413), while at OHIM an application on behalf of the Body Shop was withdrawn (000761494), and the registered mark on behalf of Asahi Foods was invalidated (No. 000923151).

  26. Rapadura is the Brazilian term for sugar molasses and in 1989 was registered on behalf of the German company Rapunzel (promoting fair trade). After negotiations with a Brazilian NGO, Rapunzel requested cancellation of the trade mark, and re-registration as “Rapunzel Rapadura” (German trade mark 1143537).

  27. Decision of the Japanese Patent Office, 18 February 2004, 37 IIC p. 98 (2006) with comment by Edson Beas Rodrigues: “Although it was well known to the applicant that Cupuaçu is a term used to describe a Brazilian fruit, the applicant’s purpose was to safeguard its considerable investment in the technological development of cupuaçu products”.

  28. German Federal Patent Office, rejection of registration dated 9 July 1997, 28 W(pat) 170/96.

  29. Trade mark registered in Germany and descriptive meaning denied by Hamburg District Court, 27 June 2003, No. 416 O 21/03.

  30. Düsseldorf Court of Appeal, 30 December 2012, No. 20 U 120/02.

  31. Proposal for a Directive of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks, 27 March 2013, COM(2013) 162 final, http://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:52013PC0162&from=EN.

  32. Proposal for a Directive of the European Parliament and of the Council of 15 June 2015, http://data.consilium.europa.eu/doc/document/ST-9547-2015-ADD-2/en/pdf.

  33. The following ideas were developed by the author of Part 2 together with Tihani Prüfer in: Heath and Prüfer (2005), p. 797.

  34. “Bella di Cerignola” is an olive grown in or around the Apulian town of Cerignola. Registrability of this term for olives was denied by the US courts with reference to a small group of well-informed olive lovers: 49 USPQ 2nd p. 2013 (1999), WL 47258 (S.D.N.Y). “Kalamata” is an olive that originates from the Southern Peloponnese in Greece.

  35. The USPTO Examination Guidelines state the following in this respect: “Marks consisting of or including foreign words or terms from common, modern languages are translated into English to determine genericness, descriptiveness, likelihood of confusion, and other similar issues. See Palm Bay, 396 F.3d p. 1377, 73 USPQ 2d p. 1696. With respect to the likelihood of confusion, “[i]t is well established that foreign words or terms are not entitled to be registered if the English-language equivalent has been previously used on or registered for products which might reasonably be assumed to come from the same source. Mary Kay Cosmetics, Inc. v. Dorian Fragrances, Ltd., 180 USPQ 406, 407 (TTAB 1973)”. Examination Guide 1-08 of 23 April 2008, http://www.uspto.gov/trademarks/resources/exam/examguide1_08.jsp.

  36. As mentioned above, marks can be freely transferred and the geographical origin of goods traded under the mark can be solely determined by the trade mark owner.

  37. TGI Paris, 30 May 2013, see this issue of IIC at doi:10.1007/s40319-015-0398-9 – Darjeeling.

  38. TGI Paris, 5 March 1984, 1984 RIPIA p. 40; 1985 Annales de la propriété industrielle p. 161.

  39. French Supreme Court, 18 February 2004, 2004 PIBD 787-III, p. 331.

  40. TGI Grasse, 18 September 1998, 1998 PIBD 665-III, p. 570.

  41. TGI Reims, 2 February 1999, case No. 97-00188.

  42. TGI Paris, 7 September 2001, PIBD 739-III, p. 169.

  43. Paris Court of Appeal, 3 November 2010, case No. 09/07276: JurisData No. 2010-029349.

  44. TGI Paris, 6 January 2012, PIBD 961-III, p. 316.

  45. German Federal Supreme Court, 19 May 2005, 2006 GRUR Int. p. 72 – Champagner Bratbirne. “Champagner Bratbirne” was the name of an alcoholic beverage made from pears, and for 200 years these pears have been called “Champagner Bratbirne” as a fruit variety. The decision only concerned the marketing of a beverage, and it is not clear from the decision whether it would have made a difference to the court if, instead of an alcoholic beverage, a fruit juice or a processed food product from this fruit variety had been marketed including the name “Champagner Bratbirne”.

  46. Le Goffic (2014).

  47. Agostini (1987), p. 3284.

  48. EU Regulation 1151/2012 on Geographical Indications, Art. 13(1)(a). For wines and spirits, the same is provided by Art. 103 Regulation No. 1308/2013. An improper use was denied for the term “Champagner Sorbet”, as this was considered the generic name of a recipe that in the case at issue contained 12 % champagne, Munich Appeal Court, 16 October 2014, 2015 GRUR p. 388 – Champagner Sorbet.

  49. This has now been clarified to a certain extent by Art. 5(3)(d)(ii) of the Revised Trade Mark Directive: “A trade mark shall not be registered or, if registered, shall be liable to be declared invalid … where and to the extent that, pursuant to Union legislation or the law of the Member State concerned providing for protection of designations of origin and geographical indications … that designation of origin or geographical indication confers on the person authorised under the relevant law to exercise the rights flowing therefrom the right to prohibit the use of a subsequent trade mark”. Proposal for a Directive of the European Parliament and of the Council of 15 June 2015, http://data.consilium.europa.eu/doc/document/ST-9547-2015-ADD-2/en/pdf.

  50. The CJEU has ruled in a different context that the comparative advertisement of a non-geographical product (here: a beer without local characteristics) with features alluding to a geographical product (here: “brut réserve”) is not permissible in general: CJEU, 19 April 2007, case C-381/05 (de Landtsheer).

  51. As is mentioned in Part 5, the precedence of European law would mean that only EU law (Regulation No. 1308/2013 would apply to the protection of the indication “Champagne”. However, an implementation of the Revised Lisbon Agreement would also mean a broadening of protection in Europe. And, most importantly, one should note that the CJEU as of yet had no opportunity to decide a case where a registered geographical indication was used by a third party for dissimilar goods, while French courts always refer to Art. L. 643-1 of the Rural Code, including in the decision of the TGI Paris of 13 May 2013 on Darjeeling.

  52. Or the comparable provision of Art. 103 Regulation No. 1308/2013 for wines and spirits.

  53. CJEU, 4 March 1999, case C-87/97 –Cambozola, 1999 Rec. ECJ I, p. 1301.

  54. TGI Paris, 6 July 2005.

  55. Paris Court of Appeal, 22 November 2006.

  56. Community trade marks Nos. 009468463, 009466228, 009466269, 009468521 and 004189742 (word and device) registered by Delta Lingerie, France.

  57. See decisions R 1504/2012-2, R 1387/2012-2, R 1502/2012-2, 17 September 2013, appeal of the Opposition Division decision on Opposition No. B 1 825 465, 11 June 2012.

  58. Action brought on 25 November 2013, The Tea Board v. OHIM – Delta Lingerie (Darjeeling collection de lingerie) (Case T-625/13).

  59. On 8 December 2011, the Supreme Administrative Court of Taiwan upheld the decision of the Intellectual Property Court and the Taiwan Intellectual Property Office of 18 November 2009 which had invalidated the registration of the trade mark.

  60. In the proceedings before OHIM, the Tea Board only invoked the Community collective trade mark registration No. 4 325 718 of the word mark “Darjeeling” filed on 7 March 2005 and registered on 31 March 2006 and Community collective trade mark registration No. 8 674 327 of the figurative mark filed on 10 November 2009 and registered on 23 April 2010. It is not clear why the Tea Board in these cases did not (also) make reference to its registered geographical indication (registered on 20 October 2011 by Regulation No. 1050/2011).

  61. “New revisions to the Lisbon Agreement system for geographical indications (GIs) have been adopted using an illegitimate process, and the resulting agreement will be problematic for the countries that choose to use it, particularly in terms of protecting common food names and the erosion of existing intellectual property rights. These were messages shared by a strong coalition of nation members to the World Intellectual Property Organization (WIPO) during this month’s Lisbon Agreement Diplomatic Conference in Geneva, which wrapped up today. The heated debate demonstrated that protecting generic food and beverage terms – from ‘parmesan’ and ‘feta’ to ‘chorizo’ and ‘chateau’, is gaining increasing attention as a critical, global market access issue”. http://www.commonfoodnames.com/wipo-members-make-forceful-case-in-questioning-the-legitimacy-and-future-usage-of-revised-geographical-indications-system/.

  62. German Patent Office, decision of 21 January 1919, 1919 BlPMZ p. 11.

  63. Fukuoka High Court, 29 January 2014, see this issue at of IIC at doi:10.1007/s40319-015-0405-1 – Hakata Ori.

  64. Although geographical indications would normally be registered based on prior recognition and reputation (see above), such recognition may not necessarily extend to all specifications compliance with which is necessary to use the indication.

  65. Registered as a European PGI on 15 November 2005, 2005 OJ L 297.

  66. Also, the last sentence of Art. 13(1) does not help: “Where a product designation of origin or a protected geographical indication contains with it the name of a product which is considered to be generic, the use of that generic name shall not be considered to be contrary to [the exclusive rights conferred]”. For one, the generic name in the above case would be “Apfel”, and not “Südtiroler Apfel”. If “Südtiroler Apfel” is considered generic, it is difficult to define what the scope of exclusivity should be. The provision has been made for the case that part of the indication is considered generic, not the whole of it.

  67. “The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:

    (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services”.

  68. CJEU, decision of 8 September 2009, case C-478/07 (Bud II).

  69. European Court of Justice, C-312/98 (Warsteiner).

  70. English Court of Appeal, 28 January 2014, Fage UK Ltd. v. Chobani UK Ltd., supra note 17 – Greek Yoghurt.

  71. Article 307 EU Treaty: “The rights and obligations arising from agreements concluded before 1 January 1958 or, for acceding States, before the date of their accession, between one or more Member States on the one hand, and one or more third countries on the other, shall not be affected by the provisions of this Treaty”.

  72. It would lead to further complications and distortions if indications protected under the Lisbon Agreement could not find protection to the extent that the country of origin and the country where protection is sought are both EU members, as this would lead to a discrimination of indications according to their origin in the country where protection is sought.

  73. “Abkommen zwischen der Italienischen Republik und der Bundesrepublik Deutschland über den Schutz von Herkunftsangaben, Ursprungsbezeichnungen und anderen geographischen Bezeichnungen vom 23. Juli 1963”, 1964 GRUR Int. p. 428.

  74. CJEU, decision of 22 December 2010, case C-120/08 concerning “Bavaria”.

  75. Regulation 1347/2001 specifically mentions two possibly conflicting trade marks, one of which is “Bavaria”, and that conflicts should be resolved based on Art. 14(2) of Regulation 2081/92 (the first EU Regulation on geographical indications).

  76. TRIPS, Preamble: “Recognizing that intellectual property rights are private rights”. There are of course reasons to question the character of geographical indications as private rights, namely the fact that they cannot be transferred and that they are not exclusive in that everyone complying with the specification is entitled to use them. See Alberto Francisco Ribeiro de Almeida, “The Legal Nature of Geographical Indications and Designations of Origin”, 2014 EIPR p. 640. Yet apart from academic interest, it is not clear what practical consequences a qualification of geographical indications as semi-public goods should have.

  77. Grand Chamber of the European Court of Human Rights, decision of 11 January 2007, Anheuser Busch v. Portugal, application No. 73049/01.

  78. The European Court of Justice in a previous decision affirmed the proprietary character of (registrable) geographical indications: CJEU, decision of 10 November 1992, C-3/91 concerning the indication “Touron de Alicante”.

  79. On this point, see the excellent analysis by Knaak (2012) (unfortunately available only in German).

  80. Only as an aside consideration, one should mention that the exercise of hypothetically establishing whether an indication could be protectable under Regulation No. 1151/2012 is prone to uncertainty and error. It took two CJEU decisions before “Feta” was found to be registrable, and why “Nürnberger Rostbratwurst” was registered and “Münchener Weißwurst” was not (could not be?) is a matter as obscure as the ingredients of the sausages in question.

  81. Knaak (2012). Critcism against this doctrine has also been voiced by Fassbender and Herbrich (2014); Tritton (2014), (“plainly hopeless”).

  82. Goebel and Groeschl (2015), chap. 13.

  83. See e.g. Guy Tritton (2014).

References

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  • Fassbender K, Herbrich T (2014) Geografische Herkunftsangaben im Spannungsfeld von nationalem und europäischem Recht. GRUR Int, p 765

  • Goebel B, Groeschl M (2015) Learning to love my PET—the long road to resolving conflicts between trade marks and geographical indications. In: Gangjee D (ed) Research handbook on intellectual property and geographical indications, ch. 13. Edward Elgar, USA (forthcoming)

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Authors and Affiliations

  1. Boards of Appeal, European Patent Office, Munich, Germany

    Christopher Heath (Dr. jur.)

  2. CIRAD, UMR Innovation/MALICA, Markets and Agriculture Linkages for Cities in Asia, Montpellier, France/Hanoi, Vietnam

    Delphine Marie-Vivien (Ph.D.)

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  1. Christopher Heath
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  2. Delphine Marie-Vivien
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Correspondence to Christopher Heath.

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Christopher Heath authored Parts 2, 4 and 5 of this article; Delphine Marie-Vivien authored Part 3.

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Heath, C., Marie-Vivien, D. Geographical Indications and the Principles of Trade Mark Law – A Distinctly European Perspective. IIC 46, 819–842 (2015). https://doi.org/10.1007/s40319-015-0392-2

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