GIs and the Community Trade Mark System: Latest Developments in the practice of the OHIM

1. GIs and the Community Trade Mark System: Latest Developments in the practice of the OHIM Richard Thewlis, OHIM

2. 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.

3. Examination practice: searches Search into PGIs/PDOs database: http://oami.europa.eu/ows/rw/pages/CTM/legalReferences/guidelines/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.

4. Examination practice: searches

5. 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.

6. 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.

7. Geographical Terms and the established OHIM Practice

8. 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

9. GI’s OHIM Practice: Typical 7(1)j case: CTM 10340875 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.

10. 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.

11. GI’s: OHIM Practice: Typical 7(1)k case: 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”.

12. 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.

13. GI’s: OHIM Practice CTM Nº 4867263 ‘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. 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:

14. Geographical Terms and the new (revised) OHIM Practice ..Taking into account concepts of (1)comparable goods and (2) evocation

15. 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).

16. Comparable Goods: Regulations 1151/2012 + 1234/2007+ 110/2008 • Protectionagainstuse/ TM toberefusedwhere: • Anyuseofthe PGI in relationtoproductsbeingcomparableproductstothosecoveredbythe PGI, … exploitationofreputation. • Question: Howwidelyshouldthenotionofcomparableproductsbeunderstood? • „Somantano“ (fig) - Class 32: grapejuice • „Welsh Lamb“ (fig) - Class 29: ediblefats • „Parma“ (fig)- Class 29: meat, salami, poultry,game??

17. 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)

18. Evocation: Regulations 1151/2012;1234/2007;110/2008 • Protectionagainstuse/TM toberefused: in casesofanymisuseorevocationof a PGI. • Evocation:coverssituationswherethe relevant termincorporatespartof a PGI, so thattheimagebroughttotheconsumer‘smindisthatoftheprotecteddesignation. • The conceptof „evocation“ isbroaderthanthatof „likelihoodofconfusion“ (ECJ Judgment in case C-87/97 [Gorgonzola]).

19. 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.

20. 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 1731/2012- 2: “CAZORLA” evoked by “CAZORLIVA”

21. Protection of GIs in Europe: Regulations 510/2006 + 1234/2007+ 110/2008 • 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

22. 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

23. 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.

24. PGI’s: Practical Cases Article 7(1)(j) and (k) in practice trade marks which contain or consist of: a protected geographic termIN ITS ENTIRITY Castilla is not readily recognizable in La Miranda de Secastilla. No evocation of the PGI. No objection raised

25. PGI’s: Practical Cases Article 7(1)(j) and (k) in practice trade marks which contain or consist of: a protected geographic termIN 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

26. PGI’s: Practical Cases Article 7(1)(j) and (k) in practice trade marks which contain or consist of: a protected geographic termIN 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

27. PGI’s: Practical Cases Article 7(1)(j) and (k) in practice “trade marks which contain or consist of aSIGNIFICANT PART of a protected geographic term” Objection raised under 7(1)j ( A Google search for “Sacra wines” shows hits almost exclusively referring to “Ribeira Sacra”.)

28. 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 is generic and therefore it is not a significant part of the protected geographic term No objection should be raised.

29. 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 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

30. 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 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.

31. PGI’s: Practical Cases Article 7(1)(j) and (k) in practice “trade marks containing a PGI but having another meaning…”

32. PGI’s: Practical Cases Restrictions & Protected Geographic Terms The TM includes two words, each of them infringing a different geographic indication. Example: CTMA 8 237 224 “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.

33. 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.

34. Thank you for your attention. For more information look at the online OHIM Manual