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 originates from the And whose quality and reputation is essentially attributable to the The production and/or preparation of which take place in the
The TRIPS definition of GI (Article 22) is similar to : GI and DO defined in Council Regulation No 510/2006 of March 26, 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs GI and DO defined in Council Regulation No 479/2008 of April 29, 2008 2008 on the common organization of the market in wine GI as defined in Council Regulation No 110/2008 of January 15, 2008 on the definition, description, presentation, labeling and the protection of geographical indications of spirit drinks Appellation of Origin as defined in the Lisbon Agreement of October 31, 1958 (as revised) for the Protection of Appellations of Origin and their International Registration 3
Dissenting interests Producers Traders Consumers Attached to a location which is famous for specific products Wish to use or register as Trade Mark a name of a prestigious location to benefit from such prestige May be deceived as to the origin of a product 4
Overview Legal Holders of a GI Instruments (Producers, available to BNIC/CIVC etc.) TM applications similar/ identical to a GI In order to prevent Use of signs -- in the course of trade -- similar/ identical to a GI 5
French Trade Mark Application composed of a term which corresponds to a geographical indication Principle : L.711-1 FIPC : geographical names can be registered as a Trade Mark Conditions 1. Trade Mark must BE Distinctive (i.e. not which h is not the case if the sign designates a feature of the product, notably its GI) 2. Trade Mark must NOT BE Deceiving (mislead the public as to the GI) 3. Trade Mark must NOT INFRINGE prior right such as ( ) a protected Appellation of Origin 6
Preventing the registration of a Trade Mark Application using a Geographical Indication French Trade Mark Application Community Trade Mark Application NO opposition proceedings (only for the owner of a registered TM) Submission of observations before INPI (stressing the inconsistency of the application with the applicable law (e.g. Royal Sauternes for cheap sparkling wine from the USA) Opposition proceedings Article 8.4 of Council Regulation 207/2009: by the Proprietor of a sign used in the course of trade of more than mere local significance is granted the right to prohibit the use of a subsequent TM (pursuant to the law governing the sign: TPICE, March 24, 2009) Geographical indication = sign used in the course of trade (no genuine use required) of more than mere local significance (right protected beyond the territory of origin) (TPICE, Bud, June 17, 2007) 7
Community Trade Mark Application Case Law 1. Konyagi in class 33 and 25 (OHIM, July 15, 2004) 2. Cuvée Palomar in class 33 (ECJ, May 11, 2010) Article 7(1)(j) of CTMR : Trade Marks for Wines which contain a GI identifying Wines ( ) with respect to Wines not having that origin 3. Champagne and Roses in class 28 (OHIM, January 27, 2010) Foreign Case Law Strawberries & Champagne in class 3 for cosmetics (CIVC) Qatar Turkey Denmark 8
Preventing the use of a Trade Mark or a sign using a Geographical Indication L.711-2 FIPC (Save for the beneficiary of a Geographical Indication in a complex Trade Mark: French Supreme Court, September 21, 2004) Lack of distinctiveness + descriptiveness French Law 9
French Law Deceiving character Infringement of a Geographical indication L.711-3 FIPC L.121-1 FCC L.711-4 FIPC L.643-1 FRC «Not used for similar products nor for other products if use likely to divert reputation to its benefit or weakens the reputation» Misleading Case Law Not Misleading 1. «Cirque de Monaco», 2003 1. «Havannah», 2004 2. «Bologna, 1981 2. «Versailles», 2005 3. «Truffes du Périgord», 1999 3. «Zanzibar», 2003 Case Law 1. Perfume : «Champagne» by Yves Saint Laurent, 1993 / «Royal Bain de Champagne», 2004 / «Havana», 2000 2. Fruits Beverage : «Champallal», l 2009 3. Sweets : «Bulle de Champagne», 1999 10
Bilateral Agreements Interpretation in favor of Geographical indication s owners : risk of mistake as to the origin «Recette de Champagne», for biscuits manufactured in the town of Champagne in Switzerland Paris Court, First Instance, April 9, 2008 Application of French Law abroad as to the use of listed designations reserved for French products over the Spanish territory : diversion of reputation «Bar Champagne», Commercial Court of Alicante, April 17, 2008 11
Community Law Council Regulation N 510/2006 for Council Regulation Council Regulation 110/2008 Agricultural products and foodstuffs 479/2008 for Wines for Spirit drinks Case Law Parmigiano Reggiano Vs Parmesan, ECJ, 26/02/2008, (not exact term/ evocating/risk of association for the consumer/no proof generic) Registered names protected against : 1. Use for : Comparable products, Other products, if undue exploitation the reputation of a registered GI. 2. Evocation 3. Misleading indication as to the provenance/true origin of a product General Comments Wording of regulations very similar Tendency for a higher standard of protection, since it applies to different products 12
Sweden Swedish Patent and Registration Office, 02/12/2006, «Strawberry & Champagne» Foreign Law Spain Commercial Court of Oviedo, 12/01/2010, (Misleading) Consorzio del Formaggio Parmigiano Reggiano, «Parmeso» Belgium Commercial Court of Brussels, 26/02/2009, (diversion to its own benefit of the reputation «Strawberry & Champagne» Columbia Bogota Court of Appeal, «Strawberry & Champagne» 13
Conclusion 1. New questions : referred to ECJ, January 5, 2010 - Shall regulation for Spirit drinks be applicable to assess the registration of a Trade Mark containing a geographical indication? - If yes, shall it be used to refuse the granting of a Trade Mark filed for spirit drinks whose manufacturing methods do not meet requirements for use of such Geographical Indication? 2. New trend : Mentioning in the course of trade elements associated to geographical indications (i.e. Margaux finished/matured in Sauternes cask) 14