A dispute over geographical indications can threaten the trade deal between the EU and Australia

As it is well-known the EU is negotiating with Australia for a $100 billion trade deal similar to those signed with Canada and Japan.

In that regard, the EU’s Agriculture Commissioner Phil Hogan expressed his concerns about the deal after the last meeting between the parties in Canberra.

As in all other deals, the EU expects all of its geographical indications to cover the other party’s territory after the deal, which aim to protect the European producers of traditional products.

The problem in the case of Australia, however, is that many local manufacturers have been using European geographical indications, such as Prosecco and Feta for free for decades. The EU insists that to be discontinued. On the other side, the Australian government tries to support its producers in an attempt to avoid eventual economic disturbance for them.

In most of the cases, such disputes end with a grace period after which the relevant producers have to seize the use of the protected geographical indications or in some cases at least to add the name of the country in front for a distinction.

Source: The Sydney Morning Herald.

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Whisky and a German-Scottish dispute over geographical indications

The European court ruled in case C‑44/17 Scotch Whisky Association v Michael Klotz, which concerns the following:

The Scotch Whisky Association is an organisation constituted under Scottish law. Its objectives include protecting the trade in Scottish whisky both in Scotland and abroad.

Mr Klotz markets, via a website, a whisky under the designation ‘Glen Buchenbach’, which is produced by the Waldhorn distillery in Berglen, located in the Buchenbach valley in Swabia (Germany).

The label on the whisky bottles in question includes, in addition to a stylised depiction of a hunting horn (Waldhorn in German), the following information: ‘Waldhornbrennerei’ (Waldhorn distillery), ‘Glen Buchenbach’, ‘Swabian Single Malt Whisky’, ‘500 ml’, ‘40% vol’, ‘Deutsches Erzeugnis’ (German product), ‘Hergestellt in den Berglen’ (produced in the Berglen).

The Scotch Whisky Association brought an action before the Landgericht Hamburg (Regional Court, Hamburg, Germany) seeking an order that Mr Klotz, inter alia, cease to market that whisky, which is not Scotch whisky, under the designation ‘Glen Buchenbach’, on the ground that use of that designation infringes, in particular, Article 16(a) to (c) of Regulation No 110/2008, which protects the geographical indications registered in Annex III to that regulation, which include ‘Scotch Whisky’.

According to the Scotch Whisky Association, those provisions ensure that a geographical indication registered for a spirit drink is protected not only against the use of such an indication but also against any reference that suggests the geographical origin of that indication. It argues that because the designation ‘Glen’ is very widely used in Scotland instead of the word ‘valley’ and, in particular, as an element of the trade mark in the names of Scottish whiskies, it evokes in the relevant public an association with Scotland and Scotch Whisky despite the fact that other information is included on the label, which specifies that the product at issue is of German origin. Mr Klotz contends that the action should be dismissed.

The Landgericht Hamburg (Regional Court, Hamburg) states that whether the claim is to succeed depends on the interpretation to be given to Article 16(a) to (c) of Regulation No 110/2008. It has therefore decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  Does “indirect commercial use” of a registered geographical indication of a spirit drink in accordance with Article 16(a) of [Regulation No 110/2008] require that the registered geographical indication be used in identical or phonetically and/or visually similar form, or is it sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area?

If the latter is sufficient: When determining whether there is any “indirect commercial use”, does the context in which the disputed element is embedded then also play a role, or can that context not counteract indirect commercial use of the registered geographical indication, even if the disputed element is accompanied by an indication of the true origin of the product?

(2) Does an “evocation” of a registered geographical indication in accordance with Article 16(b) of [Regulation No 110/2008] require that there be a phonetic and/or visual similarity between the registered geographical indication and the disputed element, or is it sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area?

If the latter is sufficient: When determining whether there is any “evocation”, does the context in which the disputed element is embedded also play a role, or can that context not counteract any unlawful evocation of the registered geographical indication, even if the disputed element is accompanied by an indication of the true origin of the product?

(3) When determining whether there is any “other false or misleading indication” in accordance with Article 16(c) of [Regulation No 110/2008], does the context in which the disputed element is embedded play a role, or can that context not counteract any misleading indication, even if the disputed element is accompanied by an indication of the true origin of the product?’

The Court decision:

1.  Article 16(a) of 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 must be interpreted as meaning that, for the purpose of establishing that there is ‘indirect commercial use’ of a registered geographical indication, the disputed element must be used in a form that is either identical to that indication or phonetically and/or visually similar to it. Accordingly, it is not sufficient that that element is liable to evoke in the relevant public some kind of association with the indication concerned or the geographical area relating thereto.

2. Article 16(b) of Regulation No 110/2008 must be interpreted as meaning that, for the purpose of establishing that there is an ‘evocation’ of a registered geographical indication, the referring court is required to determine whether, when the average European consumer who is reasonably well informed and reasonably observant and circumspect is confronted with the disputed designation, the image triggered directly in his mind is that of the product whose geographical indication is protected. In making that determination, the referring court, in the absence of (i) any phonetic and/or visual similarity between the disputed designation and the protected geographical indication and (ii) any partial incorporation of that indication in that designation, must take account of the conceptual proximity, if any, between the designation and the indication.

Article 16(b) of Regulation No 110/2008 must be interpreted as meaning that, for the purpose of establishing that there is an ‘evocation’ of a registered geographical indication, account is not to be taken either of the context surrounding the disputed element, or, in particular, of the fact that that element is accompanied by an indication of the true origin of the product concerned.

3. Article 16(c) of Regulation No 110/2008 must be interpreted as meaning that, for the purpose of establishing that there is a ‘false or misleading indication’, as prohibited by that provision, account is not be taken of the context in which the disputed element is used.

Image: jarmoluk / 1443 images, Pixabay.

Cambodia joins the Lisbon Agreement for the Protection of Appellations of Origin

WIPO reports about the accession of Cambodia to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration.

According to the information, Cambodia will accept individual fees to cover its cost of substantive examination of each international registration.

More information here.

Scotch Whisky, geographical indications and a General Court decision

The General Court of the EU ruled in Case C‑44/17, The Scotch Whisky Association, The Registered Office v Michael Klotz. The case concerns the following:

The Scotch Whisky Association, The Registered Office (‘TSWA’) is an organisation constituted under Scottish law. Its objectives include protecting the trade in Scottish whisky both in Scotland and abroad.

Mr Michael Klotz markets, via a website, a whisky under the designation ‘Glen Buchenbach’ which is produced by the Waldhorn distillery in Berglen, situated in the Buchenbach valley in Swabia (Baden-Württemberg, Germany).

The label on the whisky bottles in question includes, in addition to the full address of the German producer and the stylised drawing of a hunting horn (called a ‘Waldhorn’ in German), the following information: ‘Waldhornbrennerei [Waldhorn distillery], Glen Buchenbach, Swabian Single Malt Whisky, 500 ml, 40% vol, Deutsches Erzeugnis [German product], Hergestellt in den Berglen [produced in the Berglen]’.

TSWA brought an action before the Landgericht Hamburg (Regional Court, Hamburg) to stop Mr Klotz’s use of the designation ‘Glen Buchenbach’ for the whisky at issue, on the ground that such use infringes, in particular, Article 16(a) to (c) of Regulation No 110/2008, (5) which protects the geographical indications registered in Annex III to that regulation, including the indication ‘Scotch Whisky’. TSWA claims, inter alia, that, on the one hand, those provisions apply not only to the use of such an indication itself, but also to any reference that suggests the protected geographical indication of origin and that, on the other, the designation ‘Glen’ evokes in the relevant public an association with Scotland and Scotch Whisky, notwithstanding the addition of other references to the German origin of the product. Mr Klotz contends that the action should be dismissed.

In that context, by decision of 19 January 2017, received at the Court on 27 January 2017, the Landgericht Hamburg (Regional Court, Hamburg) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1) Does “indirect commercial use” of a registered geographical indication of a spirit drink in accordance with Article 16(a) of Regulation No 110/2008 require that the registered geographical indication be used in identical or phonetically and/or visually similar form, [ (6)] or is it sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area?

If the latter is sufficient: When determining whether there is any “indirect commercial use”, does the context in which the disputed element is embedded then also play a role, or can that context not counteract indirect commercial use of the registered geographical indication, even if the disputed element is accompanied by an indication of the true origin of the product?

(2) Does an “evocation” of a registered geographical indication in accordance with Article 16(b) of Regulation No 110/2008 require that there be a phonetic and/or visual similarity between the registered geographical indication and the disputed element, or is it sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area?

If the latter is sufficient: When determining whether there is any “evocation”, does the context in which the disputed element is embedded also play a role, or can that context not counteract any unlawful evocation of the registered geographical indication, even if the disputed element is accompanied by an indication of the true origin of the product?

(3) When determining whether there is any “other false or misleading indication” in accordance with Article 16(c) of Regulation No 110/2008, does the context in which the disputed element is embedded play a role, or can that context not counteract any misleading indication, even if the disputed element is accompanied by an indication of the true origin of the product?’

The Court decision:

(1) Article 16(a) of 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 must be interpreted as meaning that ‘indirect … use’ of a registered geographical indication, prohibited by that provision, requires the disputed designation to be identical or phonetically and/or visually similar to the indication in question. Accordingly, it is not sufficient that the disputed designation is liable to evoke in the relevant public some kind of association with the registered geographical indication or the geographical area relating thereto.

(2) Article 16(b) of Regulation No 110/2008 must be interpreted as meaning that the ‘evocation’ of a registered geographical indication prohibited by that provision does not necessarily require there to be phonetic and visual similarity between the disputed designation and the indication in question. It is not, however, sufficient that the disputed designation is liable to evoke in the relevant public some kind of association of ideas with the protected indication or the geographical area relating thereto. In the absence of such similarity, it is necessary to take account of the conceptual proximity existing, if it be the case, between the indication in question and the disputed designation, in so far as that proximity is of such a nature as to lead the consumer to have in mind, as reference image, the product whose indication is protected.

For the purposes of establishing the existence of an ‘evocation’ prohibited by Article 16(b), it is not necessary to take account of additional information found alongside the sign at issue in the description, presentation or labelling of the product concerned, in particular with regard to its true origin.

(3) Article 16(c) of Regulation No 110/2008 must be interpreted as meaning that, for the purposes of establishing the existence of a ‘false or misleading indication’ prohibited by that provision, it is not necessary to take account of additional information found alongside the sign at issue in the description, presentation or labelling of the product concerned, in particular with regard to its true origin.

PORT CHARLOTTE v Porto – a EU Court decision

The European Court has issued a decision on case C‑56/16 P UIPO срещу Instituto dos Vinhos do Douro e do Porto IP. The case concerns the following:

n 27 October 2006, [Bruichladdich Distillery Co. Ltd, (“Bruichladdich”)] filed an application for registration of an [EU] trade mark with [EUIPO] pursuant to … Regulation [No 207/2009].

Registration as a mark was sought for the word sign PORT CHARLOTTE (“the contested mark”).

The goods in respect of which registration was sought are in Class 33 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: “Alcoholic beverages”.

The contested mark was registered on 18 October 2007 under No 5421474, and published in Community Trade Marks Bulletin No 60/2007 of 29 October 2007.

On 7 April 2011, [IVDP] filed an application with [EUIPO] for a declaration that the contested mark was invalid pursuant to Article 53(1)(c), read in conjunction with Article 8(4), Article 53(2)(d), and Article 52(1)(a), read in conjunction with Article 7(1)(c) and (g) of Regulation No 207/2009, in so far as that mark designated the goods referred to in paragraph 3 above.

In response to the application for a declaration of invalidity, [Bruichladdich] limited the list of goods in respect of which the contested mark was registered to goods corresponding to the following description: “Whisky”.

In support of its application for a declaration of invalidity, [IVDP] relied on the appellations of origin “[P]orto” and “[P]ort”, which it claimed … were protected, in all the Member States, by several provisions of Portuguese law and by Article 118m(2) of … Regulation … No [1234/2007] … .

By decision of 30 April 2013, the Cancellation Division rejected the application for a declaration of invalidity.

On 22 May 2013, [IVDP] filed a notice of appeal with [EUIPO], pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

By [the contested decision], the Fourth Board of Appeal of [EUIPO] dismissed the appeal.

In the first place, the Board of Appeal rejected the argument regarding infringement of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof, in essence on the ground that the protection of designations of origin for wines was governed exclusively by Regulation No [234/2007] and, therefore, fell within the exclusive competence of the European Union. …

Furthermore, the Board of Appeal found that those geographical indications were protected only for wines and, therefore, for goods that were neither identical nor comparable to a product denominated “whisky”, namely a spirit drink with a different appearance and degree of alcohol that cannot comply with the product specification for a wine within the meaning of Article 118m(2)(a)(i) of Regulation No [1234/2007]. In so far as [IVDP] relied on the reputation of those designations of origin within the meaning of Article 118m(2)(a)(ii) of that regulation, the Board of Appeal found that the contested mark neither “use[d]” nor “evoke[d]” the geographical indications “porto” or “port”, so that it was not necessary to ascertain whether they had a reputation. … The Portuguese consumer would know that “the geographic term is actually ’Oporto’ or ‘Porto’ and that ‘Port’ is just its shortened form used on wine labels to refer to the type of wine protected under the geographical indication” (paragraphs 19 to 26 of the contested decision).

The Board of Appeal rejected [IVDP’s] argument that the protection under Article 118m(2) of Regulation No [1234/2007] ought to be extended to any sign “that includes” the term “port”. There was also no “evocation” of a port wine within the meaning of Article 118m(2)(b) of that regulation, since whisky was a different product and nothing in the contested mark contained a potentially misleading or confusing statement. Therefore, according to the Board of Appeal, the appeal was without merit under the provisions of EU law protecting geographical origins for wines and there was no need to assess whether the contested mark had a reputation (paragraphs 27 to 29 of the contested decision).

In the second place, the Board of Appeal rejected the argument regarding infringement of Article 53(2)(d) of Regulation No 207/2009, based on the claimed appellations of origin ‘[P]orto’ and ‘[P]ort’, registered with the World Intellectual Property Organisation (WIPO) on 18 March 1983 under No 682, in accordance with the Lisbon Agreement. …

In the third place, the Board of Appeal rejected the arguments regarding infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) and (g) thereof. …’

The Court’s decision:

 In the present case, the General Court, following an assessment of facts that is not open to challenge, found, in paragraphs 71 and 76 of the judgment under appeal, that the sign ‘PORT CHARLOTTE’, since it consists of the term ‘port’ and the first name Charlotte, will be perceived by the relevant public as a logical and conceptual unit referring to a harbour, that is to say a place situated on the coast or on a river, with which a first name, which constitutes the most important and most distinctive element in the contested mark, is associated. According to the General Court, the relevant public will not perceive, in that sign, any geographical reference to the port wine covered by the designation of origin in question.

 By its third ground of appeal in the cross-appeal, IVDP submits that the General Court infringed Article 118m(2)(b) of Regulation No 1234/2007 by holding, in paragraph 75 of the judgment under appeal, that the use of the contested mark PORT CHARLOTTE, which is registered in respect of a whisky, did not involve ‘misuse, imitation or evocation’, within the meaning of that provision, of the protected designation of origin ‘Porto’ or ‘Port’.

The General Court, without erring in law, applied the fundamental criterion deriving from that case-law, by holding, in paragraph 76 of the judgment under appeal, that, having regard to the findings set out in paragraph 71 of that same judgment, even though the term ‘port’ forms an integral part of the contested mark, the average consumer, even if he is of Portuguese origin or speaks Portuguese, in reaction to a whisky bearing that mark, will not associate it with a port wine covered by the designation of origin in question.

The General Court added, in paragraph 76 of the judgment under appeal, that that assessment is confirmed by the not insignificant differences between the respective features of a port wine and a whisky in terms of, inter alia, ingredients, alcohol content and taste, of which the average consumer is well aware and to which the Board of Appeal had rightly drawn attention in paragraphs 20 and 34 of the contested decision.

So in that regard:

1.      Sets aside the judgment of the General Court of the European Union of 18 November 2015, Instituto dos Vinhos do Douro e do Porto v OHIM — Bruichladdich Distillery (PORT CHARLOTTE) (T‑659/14, EU:T:2015:863);

2.      Dismisses the action brought by Instituto dos Vinhos do Douro e do Porto IP in Case T‑659/14 against the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 8 July 2014 (Case R 946/2013-4);

3.      Orders Instituto dos Vinhos do Douro e do Porto IP to pay the costs incurred by the European Union Intellectual Property Office (EUIPO) and by Bruichladdich Distillery Co. Ltd in both sets of judicial proceedings;

4.      Orders the Portuguese Republic and the European Commission to bear their own respective costs.

Cyprus lost a law case concerns cheese

The European Court ruled in joined Cases T-292/14 and T-293/14. They concern attempt of Cyprus to register two European trademarks ‘Halloumi’ and ‘Xaλλoymi’ for Class 29 – dairy products.
According to OHIM both marks are descriptive, they identify certain characteristics of the products as ‘Halloumi’ is typical cheese produced by generations in Cyprus.
The European Court upheld this decision.
At the moment Cyprus try to register an European geographical indication ‘Halloumi’  too.
More information can be found here.

Geographical indications and Expo Milano

Marques Class 46 reports about some published presentations from the seminar “A common control culture for geographical indications: a multi-level and multidisciplinary approach, best practice, public and private enforcement and the help of science” held on 01.10.2015. during Expo Milano. Access to the materials can be found here.