GIs and the Community Trade Mark system: the experience of the Consorzio del Formaggio Parmigiano-Reggiano

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GIs and the Community Trade Mark system: the experience of the Consorzio del Formaggio Parmigiano-Reggiano ECTA ROUND TABLE ON GEOGRAPHICAL INDICATIONS

1 GIs and the Community Trade Mark system: the experience of the Consorzio del Formaggio Parmigiano-Reggiano ECTA ROUND TABLE ON GEOGRAPHICAL INDICATIONS AND THE COMMUNITY TRADE MARK SYSTEM organized by the European Communities Trade Mark Association (ECTA) CÁMARA DE COMERCIO DE ALICANTE 16 FEBRUARY 2012

2 PLAN I. The relationship between PDOs/PGIs and subsequent Community Trade Marks II. Case-law of the Office for Harmonization in the Internal Market concerning the Parmigiano Reggiano PDO III. Conclusions

3 I. The relationship between PDOs/PGIs and subsequent Community Trade Marks Regulation (EC) No 510/06, Article 14.1 Where a designation of origin or a geographical indication is registered under this Regulation, the application for registration of a trademark shall be refused, where the application for registration of a trade mark is: i) submitted after the date of submission of the registration application to the Commission; ii) corresponding to one of the situations referred to in Article13; iii) relating to the same class of product (FR classe, ES clase, IT: tipo ). Trade marks registered in breach of the first subparagraph shall be invalidated.

4 I. The relationship between PDOs/PGIs and subsequent Community Trade Marks Regulation (EC) No 510/06, Article 14.1: Absolute ground for refusal i) Wording of Regulation (EC) No 510/06; ii) PDOs/PGIs aim at protecting consumers; iii) Case-law of the CJEU (e.g. CJ, Joint Cases C-4/10 and C-27/10, 14 July 2011, paragraph 41, Cognac ; GC, T-291/03, 12 September 2007, paragraphs 55-56, Grana Padano ); iv)very similar absolute ground for refusal provided for in Article 7.1.k Community Trade Mark Regulation No 207/2009 ( CTMR ); v) CTMR, Article 164: This Regulation shall not affect Council Regulation (EC) No 510/06, and in particular Article 14 thereof.

5 I. The relationship between PDOs/PGIs and subsequent Community Trade Marks C-4/10 and C-27/10, 14 July 2011, paragraph 41, Cognac : the clear and unconditional wording of Article 23(1) of Regulation No 110/2008, under which the registration of a mark which contains a geographical indication registered in Annex III is to be refused or invalidated if its use would lead to any of the situations referred to in Article 16 of that regulation, requires the national authorities to refuse or to invalidate the registration of a mark if it is used in such circumstances. T-291/03, 12 September 2007, paragraphs 55-56, Grana Padano : It follows that OHIM is bound to apply Regulation No 40/94 in such a way as not to affect the protection granted to PDO's by Regulation No 2081/92. Consequently, OHIM must refuse to register any mark which is covered by one of the situations described in Article 13 of Regulation No 2081/92 and, if the mark has already been registered, must declare that registration to be invalid.

6 I. The relationship between PDOs/PGIs and subsequent Community Trade Marks Absolute grounds for refusal: Art Regulation (EC) No 510/06 and Art. 7.1.k CTMR: i) Directly and ex officio applicable by the Office (Art. 37 CTMR); ii) The Office shall consider the observations submitted by third parties (such as groups of producers) following the publication of the application (Art. 40 CTMR). Relative grounds for refusal: i) PDOs/PGIs as earlier rights ( other signs used in the course of trade ) under Art. 8.4 CTMR (OHIM Manual, Part C. Opposition, Part 4., pages 8-9) ii) Earlier collective trade marks which consist of or contain a PDO/PGI, under Art. 8.1 or 8.5 CTMR

7 I. The relationship between PDOs/PGIs and subsequent Community Trade Marks. Regulation (EC) No 510/06, Article 13.1: Registered names shall be protected against (a) any direct or indirect commercial use of a registered name in respect of products not covered by the registration in so far as - those products are comparable to the products registered under that name or - in so far as using the name exploits the reputation of the protected name; (b) any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or accompanied by an expression such as "style", "type", "method", "as produced in", "imitation" or similar;

8 I. The relationship between PDOs/PGIs and subsequent Community Trade Marks. Regulation (EC) No 510/06, Article 13.1: Registered names shall be protected against (continuation) (c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin; (d) any other practice liable to mislead the consumer as to the true origin of the product. Where a registered name contains within it the name of an agricultural product or foodstuff which is considered generic, the use of that generic name on the appropriate agricultural product or foodstuff shall not be considered to be contrary to points (a) or (b) in the first subparagraph.

9 I. The relationship between PDOs/PGIs and subsequent Community Trade Marks The concept of EVOCATION that term covers a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image brought to his mind is that of the product whose designation is protected it is possible for a PDO to be evoked where there is no likelihood of confusion between the products concerned and even where no Community protection extends to the parts of that designation which are echoed in the term or terms at issue In the present case, there is phonetic and visual similarity between the names Parmesan and Parmigiano Reggiano, and that in a situation where the products at issue are hard cheeses, grated or intended to be grated, namely, where they have a similar appearance That proximity (conceptual proximity) and the phonetic and visual similarities referred to in paragraph 46 above are such as to bring to the mind of the consumer the cheese protected by the PDO Parmigiano Reggiano, when he is confronted by a hard cheese, grated or intended to be grated, bearing the name Parmesan (CJ, Case C- 132/05, 26 February 2008, paragraphs 44 to 49).

10 I. The relationship between the PDOs/PGIs and subsequent Community Trade Marks Germany, Cologne District Court 14 October 2009 The use of the names Parmesano and Reggianito for cheeses not complying with the specification of the PDO Parmigiano Reggiano must be regarded as evocations of the PDO. Spain, Commercial Court of Oviedo 12 January 2010 The use of the name Parmeso for grated cheese not complying with the specification of the PDO Parmigiano Reggiano must be regarded as an evocation of the PDO. Germany, Cologne District Court 8 June 2010 The use of the name Parmetta for a spicy cheese product, which contains a 54% of hard cheese and 17% of a cheese preparation, must be regarded as an evocation of the PDO Parmigiano Reggiano.

11 I. The relationship between PDOs/PGIs and subsequent Community Trade Marks Regulation (EC) No 510/06, Article 14.1: A couple of issues As concerns a name registered as PDO/PGI with the simplified procedure under Article 17 of Regulation (EEC) No 2081/92 (such as PDO Parmigiano Reggiano, PDO Prosciutto di Parma, PGI Jijona, PGI Bayerisches Bier ) The date of the entry into force of the registration of that name constitutes the reference date for the purposes of Article 14(1) of Regulation No 2081/92 (CJ, Case C-120/08, 22 December 2010, paragraph 67) e.g. Parmigiano Reggiano registered through Regulation (EC) No 1107/96 entered into force on 21 June 1996 Is the provision and relating to the same class of products (FR classe, ES clase, IT tipo ) appropriate?

12 II. Case-law of the Office concerning the Parmigiano Reggiano PDO Some controversial decisions Decision on Opposition No B of 27 January 2009: appropriate! Opposition under Art. 8.1, 8.5 and 8.4 CTMR Earlier (collective) CTM PARMIGIANO REGGIANO (fig.) (owned by the Consorzio del Formaggio Parmigiano-Reggiano) vs. contested CTM application PARMAZANO for non-milk cheese substitutes not containing any cheese or milk products, or milk byproducts for the benefit for persons allergic to milk or milk by-products or for those who do not consume milk or milk by-products for philosophical, moral, religious or cultural reasons in Class 29. The application shall be rejected under Art. 8.1.b) CTMR as: i) Signs are visually and phonetically similar and conceptually highly similar; ii) Products are identical; iii) Likelihood of confusion.

13 II. Case-law of the Office concerning the Parmigiano Reggiano PDO Some controversial decisions Observations under art. 41 CTMR: disregarded! Decision on Opposition No B of 20 July 2009 : Opposition under Art. 8.1 and 8.5 CTMR Earlier CTM PARMIGIANO REGGIANO (fig.) (Collective Trade Mark owned by the Consorzio del Formaggio Parmigiano-Reggiano Contested CTM application TRADIZIONI DI PARMA (fig.) Class 29: Charcuterie (except raw ham), meat, fish, poultry and game; jellies, jams, eggs, milk and milk products, cheese, edible oils and fats. The opposition shall be rejected under Art. 8.1.b) CTMR as the signs are clearly dissimilar. Criticism: the application should have been rejected ex officio as evocation under Art Reg. (EC) No 510/06 and Art. 7.1.k CTMR and case-law of the CJEU. The Consorzio is applying for an invalidity declaration.

14 II. Case-law of the Office concerning the Parmigiano Reggiano PDO Some controversial decisions Decision on Opposition No B of 30 June 2010: higly unsatisfactory! Opposition under Art. 8.1 and 8.5 and 8.4 of CTMR PDO PARMIGIANO REGGIANO vs. GRANOREGGIO earlier right under Art. 8.4 CTMR contested CTM application in Class 29 (for Meat, fish, poultry and game and products made therefrom; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit puree; eggs, milk and milk products, in particular cheese and products made therefrom; edible oils and fats ) as well as in Classes 30 and 31. The opposition shall be rejected under Art. 8.4 CTMR, as: i) the signs are only visually similar to a low degree; ii) The term Reggiano does not bring in mind a particular agricultural product o foodstuff, its use in isolation does not create consumer confusion, nor exploits the reputation attached to the PDO (based on the Opinion of the Advocate General 9 October 2001, in Case C- 66/00). Criticism: the various constituent parts of a composed PDO/PGI are protected, unless a constituent part has been considered generic by a national court, on the basis of a detailed analysis of the facts presented before it by the parties concerned (CJ, Case 129/97 and C- 130/97, 9 June 1998).

15 III. Conclusions Positive steps of the OHIM i) Lists of GIs of wines, spirits, agricultural products and foodstuff protected under Community Regulations and Bilateral Treaties; ii) Publication on the Office s web site of the case-law of the CJEU in relation to designations of origin and geographical indications. Criticism on the OHIM s practice i) Generally, the Office seems to disregard the absolute grounds for refusal under Art Regulation (EC) No 510/06 and 7.1.k CTMR nor to take into account observations by third parties (such as group of producers) under Art. 41 CTMR; ii) The Office does not always appear to apply the case-law of the CJEU in relation to GIs.

III. Conclusions (continuation) Criticism on the Eu GIs legislation system i) Provision and relating to the same class of products ; ii) Lack of clear protection when the contested trade mark

16 III. Conclusions (continuation) Criticism on the Eu GIs legislation system i) Provision and relating to the same class of products ; ii) Lack of clear protection when the contested trade mark application concerns a name covered under situations referred to in article 13 but applying for non comparable products that may contain PDOs/PGIs or products comparable to PDOs/PGIs as ingredients.

17 QUESTIONS? GRAZIE Giorgio Bocedi GB Avvocati, Italy 2012 Giorgio Bocedi for GB Avvocati

Barcelona, June 18, 2010

ECTA Conference, Barcelona, June 18, 2010 Protection ti of Geographical Indications A Practical Point of View Emmanuel Baud, Partner at Jones Day, Paris 1 Name of a Place/ Region Applied to A Product Which