Office for Harmonization in the Internal Market (Trade Marks and Designs) GIs and the Community Trade Mark System: Latest Developments in the practice of the OHIM Richard Thewlis, OHIM

Office for Harmonization in the Internal Market (Trade Marks and Designs) Trade marks versus GIs Similarities between trade marks and GIs: –Both rights function as indicators of origin (trade marks: commercial origin of the products / GIs geographical origin) –Both rights function as quality indicators –Trade marks and GIs confer on the legitimate users the exclusive right to use the sign –European case law on GIs and trade marks overlaps.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Examination practice: searches Search into PGIs/PDOs database: delines/OHIMManual.en.do Contains a list of GIs of wines, spirits, agricultural products and foodstuffs protected under EU Regulations and bilateral treaties “CESTO” tool – will provide examiners with smarter search to catch evocations of PGI’s.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Examination practice: searches

Office for Harmonization in the Internal Market (Trade Marks and Designs) Protection for PGI’s outside the EU Non-EU PGI’s + PDO’s may be protected in EU: For Example: “Lixian Ma Shan Yao” (China) » “Napa Valley” (USA) » “Darjeeling” (India) GI’s in respect of wine and spirits for non-EU countries are protectable by virtue of a reciprocity agreement signed with the EU: Chile, Mexico, Australia, South Africa, Switzerland.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Protection for Sub-denominations and Sub- regions GC Judgment of 11 May 2010 in case T-237/08 – Cuvée Palomar –Palomar = Local area in the subregion „Clariano“, which forms part of the region of Valencia –Protection under national law.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Geographical Terms and the established OHIM Practice

Office for Harmonization in the Internal Market (Trade Marks and Designs) GI`s – OHIM Practice Article 7(1)(j) CTMR The following shall not be registered: (j) trade marks for wines which contain or consist of a geographical indication identifying wines or for spirits which contain or consist of a geographical indication identifying spirits with respect to such wines or spirits not having that origin

Office for Harmonization in the Internal Market (Trade Marks and Designs) GI’s OHIM Practice: Typical 7(1)j case: CTM Applied for in respect of “Wines”. Object under 7(1)j CTMR Objection can be overcome with the following limitation: Class 33: Wines in conformity with the specifications of the protected geographical indication Somontano.

Office for Harmonization in the Internal Market (Trade Marks and Designs) GI´s: OHIM Practice Article 7(1)(k) CTMR (introduced in 2004): The following shall not be registered: (k) trade marks which contain or consist of a designation of origin or a geographical indication registered in accordance with Council Regulation (EC) No 510/2006 […] when they correspond to one of the situations covered by Article 13 of the said Regulation and regarding the same type of product, on condition that the application for registration of the trade mark has been submitted after the date of filing with the Commission of the application for registration of the designation of origin or geographical indication.

Office for Harmonization in the Internal Market (Trade Marks and Designs) CTM applied for in respect of “Lamb and prepared foods” ‘Welsh lamb’ is a PGI for meat Object under 7(1)k Mark accepted upon limitation:: “Lamb and prepared foods; all in conformity with the specifications of the protected geographical indication “Welsh Lamb”. GI’s: OHIM Practice: Typical 7(1)k case:

Office for Harmonization in the Internal Market (Trade Marks and Designs) GI’s: OHIM Practice Article 7(1)(j) and (k) in practice In most cases the TM is formed by several elements, among which a protected geographic term appears. In principle only 7(1)(j) or (k) will be used as grounds of the objection A proper limitation will suffice to overcome the objection under this ground If no other ground of refusal applies the trade mark can be accepted.

Office for Harmonization in the Internal Market (Trade Marks and Designs) GI’s: OHIM Practice What should we do when the CTM consists only of a PGI/PDO? We object simultaneously under Article 7(1)(c) (Descriptiveness) and 7(1)(j)/(k). Acceptance in this case is only possible for collective marks (Article 66(2)). For example: -CTM Nº ‘TEQUILA’ Collective trade mark application of Consejo Regulador de Tequila. Class 33: Tequila manufactured, protected and classified in accordance with the rules and regulations of the United States of Mexico.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Geographical Terms and the new (revised) OHIM Practice..Taking into account concepts of (1)comparable goods and (2) evocation

Office for Harmonization in the Internal Market (Trade Marks and Designs) EC Regulations: Protection of GI’s: EC Regulation No. 1151/2012 of 21 November 2012 on the protection of GIs for agricultural products and foodstuffs. EC Regulation No. 110/2008 of 15 January 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks. EC Regulation No. 1234/2007 (updated 2011) establishing a common organisation of agricultural markets (including Wines).

Office for Harmonization in the Internal Market (Trade Marks and Designs) Comparable Goods: Regulations 1151/ / /2008 Protection against use/ TM to be refused where: Any use of the PGI in relation to products being comparable products to those covered by the PGI, … exploitation of reputation. –Question: How widely should the notion of comparable products be understood? –„Somantano“ (fig) - Class 32: grape juice –„Welsh Lamb“ (fig) - Class 29: edible fats –„Parma“ (fig)- Class 29: meat, salami, poultry,game??

Office for Harmonization in the Internal Market (Trade Marks and Designs) Çomparable goods: Guidance in OHIM Manual  products which have common objective characteristics, such as method of elaboration, physical appearance of product, use of same raw materials; (Wine/ other Grape products)  products which are consumed, from the point of view of the relevant public, on largely identical occasions; (Butter/Margarine)  goods that are frequently distributed through the same channels and subject to similar marketing rules (‘COGNAC II’, para. 54). (Vodka/Gin)

Office for Harmonization in the Internal Market (Trade Marks and Designs) Evocation: Regulations 1151/2012; 1234/2007;110/2008 Protection against use/TM to be refused: in cases of any misuse or evocation of a PGI. Evocation: covers situations where the relevant term incorporates part of a PGI, so that the image brought to the consumer‘s mind is that of the protected designation. The concept of „evocation“ is broader than that of „likelihood of confusion“ (ECJ Judgment in case C-87/97 [Gorgonzola]).

Office for Harmonization in the Internal Market (Trade Marks and Designs) Evocation: Protection of GIs in Europe Judgment of the ECJ of 26/02/2008 in case C-132/05 ECJ: Phonetic and visual similarities between the names” Parmesan” and “Parmigiano Reggiano” 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”. Use of the name “Parmesan” = evocation of the PDO “Parmigiano Reggiano” in the meaning of Article 13 Regulation 2081/92.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Protection against evocation Joined cases C-4/10 and C-27/10: “Cognac” evoked by “Konjakki” Decision of second OHIM Board of Appeal in R 1731/ : “CAZORLA” evoked by “CAZORLIVA”

Office for Harmonization in the Internal Market (Trade Marks and Designs) Protection of GIs in Europe: Regulations 510/ / /2008 –Protection against: –Any misuse, imitation or evocation, even in cases where True origin of product is indicated, or Protected name is translated Expressions like „style“, „type“, „method“, „used in“, „imitation“ etc. are used

Office for Harmonization in the Internal Market (Trade Marks and Designs) The Limits of protection: Generic terms Article 3(1) EC Regulation 510/06: A ‘name that has become generic’ means the name of an agricultural product or a foodstuff which, although it relates to the place or the region where this product or foodstuff was originally produced or marketed, has become the common name of an agricultural product or a foodstuff in the Community. For example: Dijon mustard, Cheddar, Brie

Office for Harmonization in the Internal Market (Trade Marks and Designs) The Limits of protection: Terms within GI’s being “non-geographically significant” Scope of objections under 7(1(j)/(k) : Object only when the CTM consists of or contains the PGI/PDO or a significant element thereof : Consider the PGI “Chateau Grillet” for wines. Example: – A large number of Spanish wine denominations contain the word “Ribera” (meaning riverbank): Ribera del Duero; Ribera del Andarax; Ribera del Júcar, Ribera del Guadiana, etc -For an imaginary CTM “Ribera del Paraiso” No objection should be raised because the element shared (Ribera) will be understood as not geographically significant. Compare the Court’s guidance in Grana Biraghi (T-291/03) – historical, cultural and social factors may come into play.

Office for Harmonization in the Internal Market (Trade Marks and Designs) PGI’s: Practical Cases Article 7(1)(j) and (k) in practice trade marks which contain or consist of: a protected geographic term IN ITS ENTIRITY Castilla is not readily recognizable in La Miranda de Secastilla. No evocation of the PGI. No objection raised CastillaLa Miranda de Secastilla Protected term (wine)CTMA

Office for Harmonization in the Internal Market (Trade Marks and Designs) PGI’s: Practical Cases Article 7(1)(j) and (k) in practice trade marks which contain or consist of: a protected geographic term IN ITS ENTIRITY The PGI is readily recognizable in the trade mark applied for. The effect of the trade mark is to evoke the PGI. Objection raised under 7(1)j CAVACAVAVIN Protected term (wine)CTMA

Office for Harmonization in the Internal Market (Trade Marks and Designs) PGI’s: Practical Cases Article 7(1)(j) and (k) in practice trade marks which contain or consist of: a protected geographic term IN ITS ENTIRITY The PGI is readily recognizable in the trade mark applied for. The effect of the trade mark is to evoke the PGI. Objection raised under 7(1)j PORTODI PORTOFINO Protected term (wine)CTMA

Office for Harmonization in the Internal Market (Trade Marks and Designs) PGI’s: Practical Cases Article 7(1)(j) and (k) in practice “trade marks which contain or consist of a SIGNIFICANT PART of a protected geographic term” Ribeira SacraSacra Natura Protected term (wine)CTMA Objection raised under 7(1)j ( A Google search for “Sacra wines” shows hits almost exclusively referring to “Ribeira Sacra”.)

Office for Harmonization in the Internal Market (Trade Marks and Designs) PGI’s: Practical Cases Article 7(1)(j) and (k) in practice “trade marks which contain or consist of a NON- SIGNIFICANT PART of a protected geographic term Brie de MeauxBrie La Gaviota Protected term (cheese)CTMA Brie is generic and therefore it is not a significant part of the protected geographic term No objection should be raised.

Office for Harmonization in the Internal Market (Trade Marks and Designs) PGI’s: Practical Cases Article 7(1)(j) and (k) in practice “trade marks which contains or consists of a SIGNIFICANT PART of a protected geographic term MarangesPHILIPPE DE MARANGE Protected term (wine)IR W MARANGE and MARANGES are substantially the same and moreover they sound identical in French. In the trade mark one may understand Marange, contextually, as a place name. The trade mark evokes the protected term even though it does not “contain” it. Objection raised under 7(1)j

Office for Harmonization in the Internal Market (Trade Marks and Designs) PGI’s: Practical Cases Article 7(1)(j) and (k) in practice “trade marks which don’t contain or consist of a PGI as such” a variation on a protected geographic term Cecina de LeónLéon DUPONT Protected term (meat products)CTMA CTMA accepted. The CTM does not contain the term León as such because the accent is placed on a different letter. Moreover one will understand the CTM as indicating a person (a first name followed by a surname) – this reduces possibility of evocation of the PGI.

Office for Harmonization in the Internal Market (Trade Marks and Designs) PGI’s: Practical Cases Article 7(1)(j) and (k) in practice “trade marks containing a PGI but having another meaning…” TORO Protected term for wines (Spain)CTM

Office for Harmonization in the Internal Market (Trade Marks and Designs) PGI’s: Practical Cases Restrictions & Protected Geographic Terms The TM includes two words, each of them infringing a different geographic indication. Example: CTMA “RIOJA SANTIAGO” for “wines”. “Rioja” and “Santiago” are both protected separately as geographic indications for wines. An objection should be raised under Article 7(1)j. The objection cannot be overcome by any restriction.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Traditional terms for wine So-called “traditional terms” for wine (such as Tierra, Reserva, Château, Pago) are covered under EC Regulation 607/2009. Names being “Traditional Specialities Guaranteed” are covered under EU Regulation 1151/2012. Marks consisting of such traditional terms or names (in isolation) would be objectionable under 7(1)c, no objection under 7(1)j or k.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Thank you for your attention. For more information look at the online OHIM Manual