AIPPI-MIE-MSZJF Budapest 2005 “Enforcement of IP Rights in the Enlarged EU"

1. AIPPI-MIE-MSZJF Budapest 2005 “Enforcement of IP Rights in the Enlarged EU" Similarities and differences in the enforcement of trademarks and designations of origin Dr. Constanze Schulte, Lovells Madrid

2. Terminology • Trademarks: distinctive, non-descriptive signs • Geographical indications: Article 22(1) TRIPS: “Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.”

3. Geographical terms as trademarks NOKIA TOYOTA BMW PHILADELPHIA MONTBLANC SWISS

4. Geographical terms excluded for individual trademark protection Article 3(1)(c) Trademark Harmonization Directive: The following shall not be registered or if registered shall be liable to be declared invalid: • (…) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, (…), or other characteristics of the goods;

5. Chiemsee, ECR 1999, I-2779 CHIEMSEE • Ground of refusal applies to a geographical name that designates a place • Which is currently associated in the mind of the relevant class of person with the category of the goods concerned, or • Where it is reasonable to assume that such an association may be established in the future

6. Availability of collective marks / certification marks for geographically descriptive terms • For example, collective marks under the CTM Regulation (Articles 64 et seq.) • Prohibition to register geographically descriptive terms does not apply; other grounds for refusal remain untouched • Available for associations of manufacturers, producers, suppliers of services, or traders • Membership to the association must be open to everyone whose goods/services originate in the geographical area concerned

7. Collective Community trademarks – which one did not proceed to registration? ????

8. Advantages of protection via collective trademarks vis-à-vis GI protection • Well-defined standards for protection and enforcement • Familiarity of Trademark Offices/ Courts • Predictability/ Certainty

9. Protection of trademarks • Article 16 TRIPS, Article 5 Trademark Harmonization Directive • Likelihood of confusion • Reputed marks: dilution, unfair advantage

10. Enforcement of trademarks concerning geographical terms • Descriptive use exemption: Gerri/ Kerry Springs • Trademark use alone does not exclude descriptive use exemption • Likelihood of confusion alone does not exclude descriptive use exemption • It is up to the national court to carry out an overall assessment of all relevant facts

11. Protection for geographical indications • Article 22 TRIPS, protection against misleading use • Article 23 TRIPS, additional protection for wines and spirits

12. Protection of GIs under EC Regulation 2081/92 Protection against • Commercial use of term not covered by registration; • Any misuse, imitation or evocation; • Any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product; • Any other practice liable to mislead the public as to the true origin of the product.

13. Enforcement under Regulation 2081/92 • Core concept of Article 13: “misleading” use • ECJ, Judgment of 4 March 1999, C-87/97, Gorgonzola/Cambozola

14. Scope of protection under Regulation 2081/92 • Central role of the specification: determines permissible use • Breadth of specification: ECJ, Judgments of 20 May 2003, Parma Ham, C-108/01, Grana Padano, C-469/00 • Publicity of specification (P) Legal certainty

15. Translations • No right to use in translation (WTO Panel report, 15 March 2005) • Right to prohibit use in translation: • Article 13(b): Registered names shall be protected against (…) any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated (…) • Which “translations” can be prohibited?

16. Exclusive rights to “bull wine”?

17. Ownership over “goat cheese”?

18. Translations: the case for a teleological interpretation • Context of misleading use; consumer perception • Appropriate cases • Need to avoid an excessive scope of protection

19. Geographical indications for wines • Broader protection, Article 23 TRIPS • Regulation 1493/1999 • Later GI trumps trademark, only limited room for coexistence: Confusing or misleading brand names must not be used, unless registered for more than 25 years and renown.

20. Enforceability of earlier trademarks against GIs: Article 14 of Regulation 2081/92 • Para. 3: Prohibition to register GI • Para. 2: (Limited) coexistence • Former discussion on interpretation • WTO Panel report of 15 March 2005: narrow exception, based on EC’s own interpretation • Trademarks and GIs on equal footing • Earlier trademark in principle enforceable

21. The WTO Panel Report Justification under Art. 17 TRIPS / Coexistence under Art. 14.2 Reg • In many cases GIs can be refused pursuant to Art. 14.3 (read in conjunction with Art. 7.4 and 7.5 of the Regulation) • The positive right to use is limited to the GI as registered and does not to other (linguistic) versions

22. The WTO Panel Report Therefore, the Panel was satisfied • that the GI will be refused where there is a high likelihood of confusion(e.g. identity with a prior mark in one country) • that a GI can only be used as registered (no use in translation, no use in deviating versions)

23. The WTO Panel Report Under these circumstances, the Panel held that the limited coexistence permitted under Art. 14.2 of the Reg. (coexisting use of (only) the registered version where the likelihood of confusion is not high), could be justified under Art. 17 TRIPS (fair descriptive use).

24. The Panel Report - Conclusions • Priority; • Exclusivity; • Territoriality;

25. The GI-trademark relationship in Hungary • Old law: clearly TRIPS-compatible • New law: Interpretation must be made in accordance with TRIPS • Article 106, Law No. XI of 1997 on the Protection of Trademarks and Geographical Indications: • “A geographical indication shall not be granted protection • a) with respect to identical goods, if the geographical indication with the later date of priority is identical with an earlier geographical indication or trademark, • b) with respect to identical or similar goods, if the geographical indication (…) and there exists a likelihood of confusion (…)“

26. GIs and trademarks: not-so-different siblings • GIs and Trademarks IP rights at an equal footing under TRIPS • Relationship governed by Priority, Exclusivity, Territoriality • Likelihood of confusion – misleading use/ evocation • Perspective of the average consumer “who is reasonably well informed and circumspect” • Special reputation for reputed marks – exploitation of reputation of GIs (in case of particularly famous GIs)

27. GIs and trademarks: not-so-different siblings • Considerable commonalities • Where differences exist, they may not be compatible with the TRIPS Agreement and should be levelled

28. The final word for Advocate-General Jacobs: “It should be borne in mind that, as is the case with trade marks, an unduly high level of protection of geographical indications and designations of origin would impede the integration of national markets by imposing unjustified restrictions on the free flow of goods.” (Opinion of 17 December 1998, C-87/97, Gorgonzola/Cambozola, para. 57)

29. And… the end Thank you for your attention.