Whether Don Quijote de la Mancha relates to a PDO cheese?

pexels-photo-220112.jpegThe European Court has ruled in case C‑614/17 Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego v Industrial Quesera Cuquerella SL. This interesting case regards the issue of whether a geographical indication can be infringed by a graphical representation that can be related to it. In detail:

The Queso Manchego Foundation is responsible for managing and protecting the PDO ‘queso manchego’. On that basis, it brought an action against the defendants in the main proceedings before the Spanish court of first instance with jurisdiction to hear the case seeking a declaration that the labels used by IQC to identify and market the cheeses ‘Adarga de Oro’, ‘Super Rocinante’ and ‘Rocinante’, which are not covered by the PDO ‘queso manchego’, and the use of the words ‘Quesos Rocinante’ infringe the PDO ‘queso manchego’ because those labels and those words constitute an unlawful evocation of that PDO for the purpose of Article 13(1)(b) of Regulation No 510/2006.

The Spanish court of first instance dismissed that action on the ground that the signs and names used by IQC to market the cheeses which were not covered by the PDO ‘queso manchego’ were not visually or phonetically similar to the PDOs ‘queso manchego’ or ‘La Mancha’ and that the use of signs such as the name ‘Rocinante’ or the image of the literary character Don Quixote de La Mancha evoke the region of La Mancha (Spain) and not the cheese covered by the PDO ‘queso manchego’.

The Queso Manchego Foundation brought an appeal against that decision before the Audiencia Provincial de Albacete (Provincial Court, Albacete, Spain), which, by judgment of 28 October 2014, upheld the judgment at first instance. That court held that, for cheeses marketed by IQC which are not covered by the PDO ‘queso manchego’, the use of landscape and images typical of La Mancha on the labels of those cheeses leads consumers to think of the region of La Mancha but not necessarily of the cheese covered by the PDO ‘queso manchego’.

The applicant in the main proceedings brought an appeal against that judgment before the Tribunal Supremo (Supreme Court, Spain).

In its order for reference, the Tribunal Supremo (Supreme Court) sets out a number of factual considerations.

First of all, the referring court states that the word ‘manchego’ used in the PDO ‘queso manchego’ is the adjective which describes, in Spanish, the people and the products originating in the region of La Mancha. Next, it observes that the PDO ‘queso manchego’ covers cheeses made in the region of La Mancha from sheep’s milk in accordance with the traditional production, preparation and ageing requirements set out in the product specification of that PDO.

Moreover, the referring court states that Miguel de Cervantes set most of the story relating to the fictional character Don Quixote de La Mancha in the region of La Mancha. Don Quixote is also described by the referring court as having certain physical features and clothing similar to those of the character depicted on the figurative design on the label of the cheese ‘Adarga de Oro’. In that regard, the archaic word ‘adarga’ (small leather shield) is used in [Cervantes’] novel to describe the shield used by Don Quixote. In addition, the referring court notes that one of the names used by IQC for some of its cheeses is the name of the horse ridden by Don Quixote de La Mancha, namely ‘Rocinante’. The windmills which Don Quixote fights are a typical feature of the landscape of La Mancha. Landscapes featuring windmills and sheep appear on some of the labels used for the cheeses produced by IQC which are not covered by the PDO ‘queso manchego’ and in some of the illustrations on IQC’s website, which also advertises cheeses not covered by the PDO.

In those circumstances, the Tribunal Supremo (Supreme Court) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Must the evocation of a [PDO], prohibited by Article 13(1)(b) of Regulation No 510/2006 necessarily be brought about by the use of a name visually, phonetically or conceptually similar to the [PDO] or may it be brought about by the use of figurative signs evoking the [PDO]?

(2)  When the [PDO] is of a geographical nature (Article 2(1)(a) of Regulation No 510/2006) and when the products are the same or comparable, can the use of signs evoking the region with which a [PDO] is associated constitute evocation of the [PDO] itself, within the meaning of Article 13(1)(b) of Regulation No 510/2006, which is prohibited even when the user of those signs is a producer established in the region associated with the [PDO], but whose products are not protected by [that PDO] because they do not meet the requirements set out in the product specification, apart from the geographical provenance?

(3)  Must the concept of the average consumer who is reasonably well informed and reasonably observant and circumspect, to whose perception the national court has to refer in order to assess whether there is “evocation” within the meaning of Article 13(1)(b) of Regulation No 510/2006, be understood to cover European consumers or can it cover only consumers of the Member State in which the product giving rise to evocation of the protected geographical indication is produced or with which the PDO is geographically associated and in which the product is mainly consumed?’

The Court’s decision:

1.  Article 13(1)(b) of Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs must be interpreted as meaning that a registered name may be evoked through the use of figurative signs.

2. Article 13(1)(b) of Regulation No 510/2006 must be interpreted as meaning that the use of figurative signs evoking the geographical area with which a designation of origin, as referred to in Article 2(1)(a) of that regulation, is associated may constitute evocation of that designation, including where such figurative signs are used by a producer established in that region, but whose products, similar or comparable to those protected by the designation of origin, are not covered by it.

3.  The concept of the average consumer who is reasonably well informed and reasonably observant and circumspect, to whose perception the national court has to refer in order to assess whether there is ‘evocation’ within the meaning of Article 13(1)(b) of Regulation No 510/2006, must be understood as covering European consumers, including consumers of the Member State in which the product giving rise to evocation of the protected name is made or with which that name is geographically associated and in which the product is mainly consumed.

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Does AIRBNB break the law in France?

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The Advocate General of the European Court M. SZPUNAR  gave an opinion in the case  C‑390/18 AIRBNB Ireland v Hotelière Turenne SAS, Association pour un hébergement et un tourisme professionnel (AHTOP)Valhotel. The case concerns the following:

AIRBNB Ireland UC, a company governed by Irish law established in Dublin (Ireland), is part of the AIRBNB group and is wholly owned by AIRBNB Inc. AIRBNB Ireland administers, for all users established outside the United States, an online platform designed to connect, on the one hand, hosts (professionals and individuals) with accommodation available to rent with, on the other hand, persons seeking that type of accommodation.

Following a complaint against an unknown person, together with an application to join in the proceedings as civil party, lodged by, in particular, the Association pour un hébergement et un tourisme professionnel (AHTOP), the Prosecutor’s Office, Paris (France) on 16 March 2017 issued an initial indictment for handling of funds, for activities involving mediation and management of real property and business activities by a person not in possession of a professional licence, in accordance with the Hoguet law, and for other offences, alleged to have been committed between 11 April 2012 and 24 January 2017, and changed the status of AIRBNB Ireland to a ‘témoin assisté’ (a person who is not merely a witness, but to some extent a suspect).

AIRBNB Ireland denies acting as a real estate agent and claims that the Hoguet law is inapplicable on the ground that it is incompatible with Directive 2000/31.

It was in those circumstances that the investigating judge of the Tribunal de grande instance de Paris (Regional Court, Paris) (France), by decision of 6 June 2018, received at the Court on 13 June 2018, decided to stay proceedings and to refer the following questions to the Court:

‘(1) Do the services provided in France by the company AIRBNB Ireland via an electronic platform managed from Ireland benefit from the freedom to provide services provided for in Article 3 of [Directive 2000/31]?

(2) Are the restrictive rules relating to the exercise of the profession of real estate agent in France, laid down by [the Hoguet law], enforceable against the company AIRBNB Ireland?’

The Advocate’s opinion:

1) Article 2(a) of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’), read in conjunction with Article 1(b) of Directive (EU) 2015/1535 of the European Parliament and of the Council of 9 September 2015 laying down a procedure for the provision of information in the field of technical regulations and of rules on Information Society services, must be interpreted as meaning that a service consisting in connecting, via an electronic platform, potential guests with hosts offering short-term accommodation, in a situation where the provider of that service does not exercise control over the essential procedures of the provision of those services, constitutes an information society service within the meaning of those provisions.

2)  Article 3(4) of Directive 2000/31 must be interpreted as meaning that a Member State other than that in whose territory a provider of an information society service is established cannot, for reasons falling within the coordinated field, restrict the free movement of those services by relying, as against a provider of information society services, on its own initiative and without an examination of the substantive conditions being necessary, on requirements such as those relating to the practice of the profession of real estate agent, laid down in Law No 70-9 of 2 January 1970 regulating the conditions of the exercise of activities relating to certain transactions concerning real property and business assets.

New rules for handling appeals before the EU Court of Justice

flag-2608475_960_720.jpgPress release by the European Council:

In order to improve the functioning of the Court of Justice of the EU, which has seen a huge increase in the number of cases brought before it, the Council today adopted a new filtering mechanism for appeals by changing the Statute of the Court of Justice of the EU. In order to implement the change in practice, the Council also approved a set of amendments to the Court’s Rules of Procedure.

“The improved rules will facilitate the work of the Court of Justice of the EU by introducing a filtering mechanism for identifying appeals that merit examination, thus allowing the court to concentrate on its core business. The Court of Justice is overburdened and must prioritise. This decision will increase efficiency and enhance legal protection in the EU.”

      George Ciamba, Romanian Minister Delegate for European Affairs

The regulation agreed today will introduce a new filtering mechanism for appeals relating to decisions by certain EU agencies and offices. Appeals brought in cases which have already been considered twice, first by an independent board of appeal, then by the General Court, will not be allowed to proceed before the Court of Justice unless it is demonstrated that they raise an issue that is significant with respect to the unity, consistency or development of EU law. Statistics show that many such appeals, in fact, end up being dismissed on the grounds that they are either patently unfounded or manifestly inadmissible.

Specifically, the new rules will apply to appeal procedures emanating from one of the following EU agencies and offices:

the European Union Intellectual Property Office;
the Community Plant Variety Office;
the European Chemicals Agency; and
the European Union Aviation Safety Agency.
There has been a large increase over the past few years in the number of cases brought before the Court of Justice. The new procedure will reduce the workload of the court, allowing it to concentrate on cases that require its full attention.

The regulation adopted today is based on a proposal from the Court of Justice and has been agreed in negotiations between the Court of Justice, the Commission, the European Parliament, and the Council. The Council today also approved an accompanying set of amendments to the Rules of Procedure of the Court of Justice setting out the new system for handling appeals in detail.

For more information here.

Tests, well-known trademarks and a European Court decision

pexels-photo-951233.jpegThe European Court has ruled in case C‑690/17 ÖKO-Test Verlag GmbH v Dr. Rudolf Liebe Nachf. GmbH & Co. KG. This case concerns the following:

ÖKO-Test Verlag is the owner of the following German and EU trademark for printed works and testing and information and consultation services.

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ÖKO-Test Verlag chooses different goods from the market and makes tests on them without consent from the relevant producers. After that, the results are published in the magazine issued by ÖKO-Test.

Sometimes these producers are invited to use the results from these tests for marketing purposes in which case they are allowed ÖKO-Test trademark on products’ packages under a license.

Dr. Liebe produces toothpaste. In 2005 this company signed a license agreement to use ÖKO-Test for its product which was subject to a test receiving a very good assessment.

In 2014, however, ÖKO-Test Verlag found that Dr. Liebe was still been using its trademark although that wasn’t allowed under the license.

Dr. Liebe disagreed and because of which a lawsuit followed.  The Oberlandesgericht Düsseldorf  raised the following questions to the European court:

‘(1) Is there an unlawful use within the meaning of Article 9 (1), second sentence, (b) of [Regulation No 207/2009] or the second sentence of Article 5 (1) (a) 95] where:

  • the individual mark is affixed to a product for which the individual mark is not registered,
  • in the course of trade, the affixing of an individual mark by a third party is perceived as a “test mark”, that is to say, the product is manufactured and marketed by a third party not under the control of the proprietor of the trademark, but the holder of the mark has tested this product for certain qualities and based on this it has indicated in the test mark a certain result such as assessment,
  • and the individual mark is registered in particular for “informing and consulting consumers on the choice of goods and services, in particular through the use of test and research results and quality assessments”?

2. If the Court of Justice answers the first question in the negative:

  • Is there an unlawful use within the meaning of Article 9 (1) (c) of [Regulation No 207/2009] and of Article 5 (2) of [Directive 2008/95] if:
  • The individual mark is only known as the test mark described in point 1, and
  • the individual mark is used by a third person as a test mark? “

The Court’s decision:

1. Article 9 (1) (a) and (b) of Council Regulation (EC) No 207/2009 and Article 5 (1) of Directive 2008/95 / EC must be interpreted as not authorizing the proprietor of an individual mark consisting of a test mark to opposes the affixing by a third party of a sign identical or similar to that mark on goods which are neither identical nor similar to the goods or services for which the mark in question is registered.

2. Article 9 (1) (c) of Regulation No 207/2009 and Article 5 (2) of Directive 2008/95 are to be interpreted as authorizing the proprietor of a mark consisting of a test mark, an individual mark with reputation to oppose the affixing by a third party of a sign identical with, or similar to, that mark to goods which are neither identical nor similar to those for which the mark in question is registered, provided that it is established that, by affixing this sign to the goods the third party takes unfair advantage of distinctive character or reputation of the same mark or damages the trademark without clear legal grounds for this. 

(Unofficial translation)

Formula E crashed in a case before the European Court of Justice

race-track-flag-2035566_960_720.jpgThe European Court has ruled in case C‑282/18 – The Green Effort Limited v Fédération internationale de l’automobile (FIA). Even though the case is simple, it clearly shows why every trademark owner has to stick to the deadlines given by the EUIPO.

The Case concerns the following:

The Green Effort acquired rights over the word mark Formula E, the application for registration of which was filed on 17 November 2010.

The goods and services in respect of which registration was sought are:

–        Class 25: ‘Clothing’;

–        Class 38: ‘Broadcasting by radio, television and satellite’;

–        Class 41: ‘Organization of sporting events’.

The EU trademark application was published on 3 December 2010 and the trade mark applied for was registered on 14 March 2011.

On 15 March 2016, Fédération internationale de l’automobile (FIA) filed an application for revocation of the contested mark for all the goods and services, pursuant to Article 51(1)(a) of Regulation No 207/2009, now Article 58(1)(a) of Regulation 2017/1001, on the ground that it had not been put to genuine use within a continuous period of five years.

On 21 March 2016, the Cancellation Division of EUIPO invited The Green Effort to submit, by 21 June 2016, proof of genuine use of the contested mark. Since that proof was submitted on 22 June 2016, in disregard of the time limit prescribed, it was not taken into account.

On 27 July 2016, The Green Effort filed an application for restitutio in integrum with the Cancellation Division of EUIPO in order have its rights to submit that proof re-established.

By decision of 8 September 2016, the Cancellation Division rejected the application and revoked the contested mark in its entirety.

On 5 October 2016, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

By the contested decision, the Second Board of Appeal of EUIPO (‘the Board of Appeal’) dismissed the appeal.

In support of its decision, the Board of Appeal considered that neither the proprietor of the contested mark nor its representative showed that they had actually taken the utmost care to observe the time limit prescribed for submitting the documents proving genuine use of the contested mark. It took the view that, while there is evidence in the file of repeated attempts to send electronic communications and fax communications from The Green Effort to EUIPO, with respect to Spanish local time all communications were received on 22 June 2016, that is to say after the time limit prescribed had expired, since the explanations provided in that regard could not be regarded as ‘exceptional’.

Therefore, the Board of Appeal upheld the decision of the Cancellation Division to reject the application for restitutio in integrum, and, with regard to the application for revocation of the contested mark, it considered that, in the absence of any proof of genuine use in the European Union during the relevant period or of any indications of proper reasons for non-use, the rights acquired by The Green Effort had to be revoked in their entirety and deemed not to have had any effect as from 15 March 2016.

The Court dismissed the appeal by The Green Effort Limited considering that the EUIPO’s position on the matter is correct. The arguments are:

As set out in Article 4(4) of that decision, without prejudice to accurately establishing the date of notification, notification will be deemed to have taken place on the fifth calendar day following the day on which EUIPO placed the document in the user’s inbox.

That interpretation meets the requirements stemming from the principle of legal certainty by preventing a decision of the Board of Appeal from being called into question indefinitely, given that, if no access to the document concerned is requested after it has been placed in the recipient’s inbox, the notification is deemed to have taken place on the fifth calendar day after being so placed.

Therefore, since it is common ground that the representative of The Green Effort requested access to the contested decision on 19 September 2017, that he downloaded it and became aware of it on that same day, the General Court did not err in law in deciding that the time limit for bringing an action against the contested decision expired on 29 November 2017, that decision having been notified on 19 September 2017. Therefore, the ground of appeal alleging that the starting point of the time limit prescribed for bringing an action was wrongly determined must be rejected as unfounded.

Irish whiskey is now protected EU Geographical indication

drink-3108436_960_720.jpgThe European Commission confirmed the Irish whiskey status as a protected European Geographical indication. The scope of protection covers different variations of this whiskey such as malt Irish whiskey, pot still Irish whiskey, grain Irish whiskey, and blended Irish whiskey.

Irish whiskey has been known since the 6th Century. In the 19 Century, its production rose significantly and in the 20 Century, it became worldwide known.

In the future, this whiskey will be produced only on the territory of Irland under strict requirements and approved methods.

This is a strategic step for the Irish Whiskey Association because it gives an opportunity for legal protection against unfair competition and infringements. What’s more, the protection of this Geographical indication will be included in future trade negotiations between The EU and third parties which by itself is crucial for the Association taking into account its global sells.

Breaking News – The EU Council approves DSM Directive

The EU Council has approved the DSM Directive. You can see how every Member State voted below:

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The next step is the transposition of this Directive into the national legislation of every EU Member State, which has to be done within 24 months.

Source: IP Kat.