Cognac comes off best in spirited attack on Finns

The Cognac zone

Food and drink authorities across the length and breadth of the European Union, and even beyond it, have been stockpiling geographical indications. This legal-gastronomic arms race was bound to produce litigation. So far, much of the recent angry, hostile legal action we've seen has concerned makers of cheeses (Feta, Gorzonzola/Cambozola, Parmigiano Reggiano) and beers (let's lift a glass to Budweiser and Bavaria), not to mention wines (Champagne is a name that trips lightly off the tongue of many a fine adjudicator).

Today it was the turn of spirits, with Joined Cases C-4/10 and C-27/10 Bureau national interprofessionel du Cognac v Gust. Ranin Oy, where the casus belli was another great French duty-free shelf-filler-- Cognac.  Decisions of the Court of Justice of the European Union (ECJ) are often quite dull to read even when the dispute is interesting, but this case has some redeeming features.  First, the judgment is relatively short: although it's 67 paragraphs in length, they're predominantly short ones.  Secondly the ECJ proceeded to judgment without troubling the Advocate General to deliver an opinion, thus minimising the risk of judicial confusion and giving the court's hard-pressed translators an afternoon off in which to sip cocktails on Luxembourg's luxurious sandy beaches.  Thirdly, Curia has provided a short press release, from which this Kat quotes extensively below:

"A trade mark containing the geographical indication ‘Cognac’ cannot be registered to designate a spirit drink not covered by that indication 

The commercial use of such a mark would adversely affect the protected indication 

Under the regulation on the protection of geographical indications for spirit drinks [Regulation 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation 1576/89], it is possible to register as a geographical indication the name of a country, region or locality from which a spirit drink originates, where a given quality, reputation or other characteristic of that drink is essentially attributable to its geographical origin. A registration of that kind is made upon application by the Member State of origin of the drink. The application must be accompanied by a technical file listing the specifications which the drink must meet if it is to be able to be designated by the protected geographical indication. 

Furthermore, the regulation prohibits the registration of trade marks which may adversely affect a protected geographical indication and states that, as a general rule, where such a mark has
already been registered, it must be invalidated [This, as one might imagine, is none too popular with trade mark owners. What makes it even more frustrating for trade mark owners is that a GI, once registered, cannot become generic in legal terms. even though in reality it is]. 

The regulation mentions ‘Cognac’ as a geographical indication identifying wine spirits originating from France. Gust. Ranin Oy, a Finnish company, applied in Finland for the registration, for spirit drinks, of two figurative marks in the form of a bottle label bearing descriptions of the spirit drinks containing the term ‘Cognac’ and its Finnish translation, ‘konjakki’. Although the Finnish authorities have accepted the application for registration, the Bureau national interprofessionel du Cognac – a French organisation of cognac producers – contests the legality of that registration before the Finnish courts. 

The Korkein hallinto-oikeus (Supreme Administrative Court, Finland) asks the Court of Justice whether it is permissible under the regulation to register national trade marks containing the term ‘Cognac’ for products which, in terms of manufacturing method and alcohol content, do not meet the requirements set for the use of the geographical indication ‘Cognac’. 

In its judgment .. the Court states first ... that although the contested marks were registered on 31 January 2003 – that is to say, before the regulation entered into force – that regulation is applicable in the present case. In that connection, the Court observes that the retrospective application of the regulation does not undermine the principle of legal certainty or the principle of the protection of legitimate expectations [because T]he obligation on Member States to prevent the use of a geographical indication identifying spirits for alcoholic beverages which do not originate from the place designated by that indication has existed in EU law since 1 January 1996.

Next, the Court observes that the two Finnish trade marks ... cannot benefit from the derogation provided for under the regulation, in accordance with which the use of a mark which was acquired before the date of protection of the geographical indication in the country of origin (or before 1 January 1996) is permitted, even if it adversely affects the geographical indication concerned. In that regard, the Court points out that, independently of the protection it enjoys under French law, the term ‘Cognac’ has been protected as a geographical indication under EU law since 15 June 1989.

The Court also finds that the use of a mark containing the term ‘Cognac’ for products which are not covered by that indication constitutes a direct commercial use of the protected indication [under Article 16(a) of the Regulation, GIs are protected against "direct or indirect commercial use". The terminology is therefore different to, and broader than, that which governs use in European trade mark legislation]. Such a use is prohibited by the regulation in so far as it concerns comparable products. The Court finds that this may be the position in the case of spirit drinks.

Likewise, the Court finds that the fact that the two Finnish marks incorporate part of the name ‘Cognac’ means that, when the consumer is confronted with the name of the marks on the bottles of spirit drinks not covered by the protected indication, the image triggered in his mind is that of the product whose designation is protected. The Court points out that such ‘evocation’ is also prohibited under the regulation ['evocation' being another term not found in European trade mark law, where resort is had to non-statutory formulations such as whether in the mind of the consumer there exists a "link" or whether a later mark calls to mind an earlier one. The absence of common vocabulary as between GI and trade mark law always offers a potential ground for distinguishing a decision on one from a decision of the other: good news for scholars and litigation lawyers, but it probably doesn't benefit anyone else].

In those circumstances, the Court holds that the Finnish authorities must invalidate the
registration of the contested marks".

It's now up to the Finnish Court to apply this guidance.

The term Cognac is now protected in India here and in China here
Make your own Cognac here
Alcohol, leading cause of death in Finland here

GI applications: is there a watch service?

The IPKat's own GI watch service: you can be
sure of a paws-on approach ...

Trade mark watch services are  -- depending on your view -- (i) a blessing for brand owners who can't be everywhere all the time and need help spotting those sneaky and inconvenient applications made by others who have decided to register the same or a similar trade mark when and where you least expect them or (ii) a necessary evil and a further drain on brand owners' finances.  Businesses which have been alerted to potentially troublesome third party registrations tend to gravitate towards the first opinion, while those which keep on paying but are never disturbed by serious threats veer towards the latter.

So far as this member of the Kat family knows (and for once he's very happy to be proved wrong), there is another threat to the commercial plans and happy expectations of brand-based businesses: in those countries where geographical indications (GIs) are protected other than through the regular trade mark registration process, there is the risk that an existing trade mark registration may be inconvenienced, or indeed blotted out entirely if GI opposition procedures are not conducted within the window of opportunity provided (six months in the EU) -- and there is no obvious and convenient way in which a trade mark owner can have a GI cancelled.

What the Kat wants to know (and he must confess that his curiosity has been stimulated by a reader's query) is this:

• is anyone currently offering a regular "watch service" for GI applications which is comparable to that for trade marks?  
• is there any means of lodging a caveat with any national or supranational authority so that a trade mark owner can expect to be officially notified of any application to register his own trade mark as a GI?

While the query originated within the context of the European Union, where the Commission has its own well-established modus operandi, responses from other jurisdictions are also very welcome.

Bad Kissinger gets no GI protection as Commission strikes out German mass application

Posted today on the website of the European Union's online Official Journal is a most rare and unusual document -- Commission Decision of 19 April 2010 rejecting a list of applications for entry in the register of protected designations of origin and protected geographical indications provided for in Council Regulation (EC) No 510/2006. The recitals to the Decision tell the story, and what a sorry tale it is. In short:

* In 1994 Germany notified to the Commission a large number of applications for registration concerning mineral waters pursuant to Article 17(2) of Council Regulation 2081/92 [the original Regulation on the protection of geographical indications and designations of origin, subsequently repealed and re-enacted in codified form, together with various amendments, as Council Regulation 510/2006], 108 of which are still pending.

* 31 of those names were not included in the list of natural mineral waters recognized by Member States as marketable mineral waters under Directive 2009/54 on the exploitation and marketing of natural mineral waters. Since waters the names of which are not on the list can't be marketed, their names can't be protected as GIs.

* A further seven names were listed without any other information, so the Commission couldn't check them out to see if they were entitled to GI protection.

* Regarding another 70 mineral water names, the Commission asked the Germans back in 2004, and again in 2006 and 2007, either to provide additional information, in particular on "details of control bodies, willingness of producers to cover inspection costs and structures guaranteeing the marketing of the water under a single name" or to withdraw the applications. No reply was received.

The Council Decision contains three Annexes, listing the names in question. They include such tantalising titles as Bad Kissinger Theresienquelle, Kondrauer Mineralsprudel Heilwasser Prinz-Ludwig-Quelle and Kondrauer Mineral-Sprudel Gerwig-Quelle.

The IPKat, as ever conscious of the passage of time, is disappointed that it has taken 16 years to deal with a pretty inert application. He is pleased however to see that, however leniently the Commission seems to view many current applications for GI status, it still respects some standards. Merpel, noting that German water is the most expensive on the planet, muses over the splendid name Kondrauer Mineralsprudel Heilwasser Prinz-Ludwig-Quelle and wonders how, if it should ever become a popular brand, it would be guarded from the depredations of typosquatters.

German water v beer here

Bad water here

Bath water here

Bad Kissinger here

Bad kissing here

German water for the Court of Justice of the European Union here

Serbians put the stamp on GI cooperation with the Swiss

An item that caught the IPKat's imagination, from the pages of the Petosevic IP newsletter, was this report, entitled "Switzerland Helps Serbia Improve System of Protection of Geographical Indications". According to the Kat's informant:

"On February 22, 2010, the Serbian and Swiss officials signed a Memorandum of understanding with an aim to improve the Serbian system of protection of geographical indications through the Project of technical assistance to Serbia, which the Swiss government financed with USD 740,000 (EUR 538,000).

Serbian Deputy Prime Minister for European Integration and Minister of Science and Technological Development Bozidar Djelic underlined that this project will help Serbia’s European integration and promote it as a country that produces not only raw materials but also finished products.

State Secretary of the Swiss Ministry of Foreign Affairs Michael Ambuhl explained that the cooperation will not only help place Serbian traditional specialties on the European market, but also contribute to Serbia’s quicker accession into the World Trade Organization.

The implementation of the project will last for three years".

The IPKat thinks this is lovely. Serbia and Switzerland have so much in common: they both begin with 'S', have mountains, enjoy chocolates and -- this is probably the least-known fact about the two nations -- each won the European Song Contest on the first occasion in which it competed. There are some differences, it should be conceded (the Kat would sooner have a Swiss timepiece and watch the Serbs play football than the other way round), but this is obviously an alliance upon which the new Europe will be solidly founded.

Merpel however has lots of questions about this project and wonders if his readers can answer them for him: (i) Why was Serbia signing up for this three year project to improve its system for GI protection less than six weeks before its new GI protection legislation came into force? (ii) Why is this project due to cost so much? What will the cash be spent on? (iii) How does this cooperation with Switzerland accelerate accession to the World Trade Organization? (iv) Why is the project going to last for three years? That's a long time, given that Serbia is not unfamiliar with principles of IP protection or of entrepreneurialism. (v) What is Switzerland getting out of the cooperation, or is this a little bit of welcome altruism? (vi) Why Switzerland, whose contribution to European integration includes avoiding membership of the European Union and backing away from the European Economic Area?

"Das alte Karussell" here and (on YouTube) here
"Molitva" here and (on YouTube) here

Be circumspect about your salami

Back in May, as readers of this weblog will surely remember, Advocate General Eleanor Sharpston QC gave her Opinion to the Court of Justice of the European Communities in Case C‑446/07 Alberto Severi, in his own name and representing Cavazzuti e figli SpA, now known as Grandi Salumifici Italiani SpA v Regione Emilia-Romagna, a reference for a preliminary ruling from the Tribunale Civile di Modena, Italy. Well, earlier this month -- on 10 September -- the Court gave its ruling here.

Right: Salame Felino, straight from the Museo del Cibo website

To recap: Felino is a small town in the Emilia-Romagna region of Italy. Cavazzuti (now Grandi Salumifici Italiani SpA -- GSI for short) makes local salami sausages which it sells as ‘Salame Felino’ and/or ‘Salame tipo Felino’ [Feline salami? Salami fit for a Kat?]. Since 1970 it made this salami around 50 km down the road in nearby Modena. In May 2006 the region of Emilia-Romagna imposed an administrative penalty on GSI for using the name ‘Salame tipo Felino’ on its labelling in a way that was misleading to consumers. The region took the view that GSI infringed Article 2 of Legislative Decree 109/92, which transposed Article 2 of Directive 2000/13 into national law in Italy [essentially: thou shalt not mislead consumers by mislabelling goods]. At the operative time, the term ‘Salame Felino’ was neither registered as a Protected Designation of Origin (PDO) nor as a Protected Geographical Indication (PGI). An application had however been made to protect ‘Salame Felino’ as a PGI.

GSI applied to the Tribunale Civile di Modena to have the administrative penalty overturned on the grounds that ‘Salame Felino’ was generic and had been used for a number of years and in good faith outside the municipality of Felino, including in respect of a collective trade mark. The Tribunale Civile stayed the proceedings and referred the following questions to the Court of Justice:

‘1. Must Articles 3(1) and 13(3) of Regulation ... 2081/92 (now Articles 3(1) and 13(2) of Regulation ... 510/06), read with Article 2 of Legislative Decree 109/92 (Article 2 of Directive 2000/13/EC), be interpreted as meaning that the name of a food product containing geographical references, for which, at national level, the submission of an application to the Commission for registration as a protected designation of origin (PDO) or a protected geographical indication (PGI) within the meaning of those regulations has been “rejected” or blocked, must be considered generic at least throughout the period for which such “rejection” or blocking remains effective?

2. Must [the same provisions] be interpreted as meaning that the name of a food product which is evocative of a place, but not registered as a PDO or PGI within the meaning of those regulations, may be legitimately used in the European market by producers who have used it in good faith and uninterruptedly for a considerable period before the entry into force of Regulation ... 2081/92 (now Regulation ... 510/06) and in the period following the entry into force of that regulation?

3. Must Article 15(2) of the First Council Directive 89/104 ... to approximate the laws of the Member States relating to trade marks be interpreted as meaning that the proprietor of a collective mark for a food product containing a geographical reference is not allowed to prevent producers of a product having the same characteristics from using to describe it a name similar to that contained in the collective mark, where those producers have used that name in good faith and uninterruptedly over a period of time considerably pre-dating the registration of that collective mark?’

Now we have our answer. Said the Court, in its inimitable fashion:

"1. Articles 3(1) and 13(3) ... must be interpreted as meaning that the designation of a foodstuff containing geographical references, which has been the subject of an application for registration as a protected designation of origin or a protected geographical indication within the meaning of Regulation No 2081/92, as amended by Regulation No 2796/2000, cannot be regarded as generic pending the possible forwarding of the application for registration to the Commission of the European Communities by the national authorities. A designation cannot be presumed to be generic, within the meaning of Regulation No 2081/92, as amended ..., for as long as the Commission has not taken a decision on the application for registration of the designation, as the case may be, by rejecting it on the specific ground that that designation has become generic.

2. Articles 3(1) and 13(3) ... must be interpreted as meaning that the designation of a foodstuff containing geographical references, which is not registered as a protected designation of origin or a protected geographical indication, may legitimately be used, on condition that the labelling of the product so named does not mislead the average reasonably well informed, observant and circumspect consumer. For the purpose of assessing whether that is the case, national courts may have regard to the length of time during which the name has been used. By contrast, any good faith on the part of the manufacturer or retailer is irrelevant in that regard".

The Court agreed with AG Sharpston that the third question was inadmissable: at para. 68 it said:

"... the question whether the proprietor of a collective trade mark relating to a foodstuff and containing a geographical reference identical to the designation at issue in the main proceedings may oppose the use of that designation is manifestly irrelevant to the resolution of the dispute in the main proceedings and must for that reason be declared inadmissible".

The result, the IPKat considers, is quite cheerful for purveyors of the contentious sausage. While the Salame Felino cannot be deemed generic, or indeed anything else, until the Commission have sniffed it and passed judgment, Severi and his merry men can carry on selling it so long as "the average reasonably well informed, observant and circumspect consumer" is not misled by its appellation ['Misled' here is an interesting concept, says Merpel. Most local Italians won't be misled because they are circumspect about their salamis; most non-locals aren't materially misled unless they assume that salami from Felino and Modena respectively are different entities].

Salame Felino here; Felino here; Fellini here; Fellaini here. Confused yet?

Good faith irrelevant when selling non-misleading sausages

The highest courts of the European Union have this week been commemorating National Sausage Week.  On Wednesday the Court of First Instance gave its verdict on an appeal against OHIM's refusal to allow registration of a very pretty pretzel configuration of five sausages (see earlier post here). Yesterday, moving the focus from German to Italian sausages, Advocate General Eleanor Sharpston QC gave her Opinion to the Court of Justice of the European Communities in Case C‑446/07 Alberto Severi, in his own name and representing Cavazzuti e figli SpA, now known as Grandi Salumifici Italiani SpA v Regione Emilia-Romagna, a reference for a preliminary ruling from the Tribunale Civile di Modena, Italy.

What was this reference all about? Felino is a small town in the Emilia-Romagna region of Italy. Cavazzuti (now Grandi Salumifici Italiani SpA -- GSI for short) makes local salami sausages which it sells as ‘Salame Felino’ and/or ‘Salame tipo Felino’. Since 1970 it has produced this salami around 50 km down the road in nearby Modena. In May 2006 the region of Emilia-Romagna imposed an administrative penalty on GSI for using the name ‘Salame tipo Felino’ on its labelling in a way that was misleading to consumers. The region took the view that GSI had infringed Article 2 of Legislative Decree 109/92, which transposed Article 2 of Directive 2000/13 into national law in Italy (essentially: thou shalt not mislead consumers by mislabelling goods). At this crucial phase of Italian history the term ‘Salame Felino’ was neither registered as a Protected Designation of Origin (PDO) nor as a Protected Geographical Indication (PGI). An application had however been made to protect ‘Salame Felino’ as a PGI.

GSI applied to the Tribunale Civile di Modena to have the administrative penalty overturned on the grounds that ‘Salame Felino’ was generic and had been used for a number of years and in good faith outside the municipality of Felino, including in respect of a collective trade mark. The Tribunale Civile stayed the proceedings and referred the following questions to the Court of Justice:

‘1. Must Articles 3(1) and 13(3) of Regulation ... 2081/92 (now Articles 3(1) and 13(2) of Regulation ... 510/06), read with Article 2 of Legislative Decree 109/92 (Article 2 of Directive 2000/13/EC), be interpreted as meaning that the name of a food product containing geographical references, for which, at national level, the submission of an application to the Commission for registration as a protected designation of origin (PDO) or a protected geographical indication (PGI) within the meaning of those regulations has been “rejected” or blocked, must be considered generic at least throughout the period for which such “rejection” or blocking remains effective?

2. Must [the same provisions] be interpreted as meaning that the name of a food product which is evocative of a place, but not registered as a PDO or PGI within the meaning of those regulations, may be legitimately used in the European market by producers who have used it in good faith and uninterruptedly for a considerable period before the entry into force of Regulation ... 2081/92 (now Regulation ... 510/06) and in the period following the entry into force of that regulation?

3. Must Article 15(2) of the First Council Directive 89/104 ... to approximate the laws of the Member States relating to trade marks be interpreted as meaning that the proprietor of a collective mark for a food product containing a geographical reference is not allowed to prevent producers of a product having the same characteristics from using to describe it a name similar to that contained in the collective mark, where those producers have used that name in good faith and uninterruptedly over a period of time considerably pre-dating the registration of that collective mark?’

Yesterday AG Sharpston recommended that the Court should answer the first two questions referred by the Tribunale Civile di Modena as follows:

(1) [The relevant provisions] must be interpreted as meaning that the name of a food product containing geographical references, for which an application has been made for registration as a protected designation of origin or a protected geographical indication within the meaning of those regulations, cannot be assumed to be generic unless and until the application has been rejected by the Commission on the ground that the name has become generic.

(2) The same provisions, read with Article 2 of Directive 2000/13/EC ... on the approximation of the laws of the Member States relating to the labelling, presentation and advertising of foodstuffs, must be interpreted as meaning that the name of a food product which is evocative of a place, but not registered as a protected designation of origin or a protected geographical indication within the meaning of those regulations, may legitimately be used provided that the name is not used in a way which is likely to mislead the average reasonably well-informed, observant and circumspect consumer. In assessing whether that is the case, national jurisdictions may have regard to the length of time during which the name has been used. The good faith (or otherwise) of the producer is, however, irrelevant".

What, the Kats hear you ask, happened to the third question? AG Sharpston deemed it inadmissable:

"The Italian Government argues that the third question is inadmissible because the case before the national court does not concern collective trade marks. The region of Emilia-Romagna neither holds the mark, nor alleges that GSI infringed it. Moreover, the Italian Government suggested at the hearing that the referring court was concerned only with whether GSI’s labelling was likely to mislead the consumer, and that despite the APTSF’s intervention in the proceedings, an allegation that a collective trade mark had been infringed was no part of the case before the national court.

72. The Court may decline to answer a question referred for a preliminary ruling if it has no relation to the actual facts of the main action or to its purpose.  The third question referred asks whether Directive 89/104 might provide another basis for preventing GSI from using the name ‘Salame Felino’. However, the administrative penalty contested in the main proceedings was based solely on an alleged infringement of the national provisions transposing Article 2 of Directive 2000/13.

73. Although the administrative penalty noted that ‘Salame Felino’ is a registered mark, that was in the course of establishing that GSI’s use of ‘Salame tipo Felino’ was misleading to consumers. Similarly, GSI referred to the use in good faith of the name ‘Salame Felino’ by traders outside the municipality of Felino in relation to a collective trade mark as part of its argument that its use of the name on labelling did not mislead consumers.

74. The absence of any allegation that there has been an infringement of a collective trade mark indicates that the question of whether a holder of a collective trade mark may oppose the use in good faith of a name similar to that found in the collective mark is irrelevant to the central issue before the national court, namely, the circumstances in which a company is likely to mislead consumers by the use of a geographical name on the labelling of its products.

75. The third question is therefore inadmissible".

The IPKat will be watching this one with interest, since there isn't what you'd call a large volume of jurisprudence in Europe on the interface between trade marks, collective marks and geographical indications and whatever happens in the final ruling will affect both strategic thinking and porfolio development issues involving the exploitation of terms where that exploitation is not coextensive with the area they signify. Merpel and Tufty chime in, Salame Felino sounds like an exotic cat!

Salame Felino here

Make your own salami here

Health risks of sausages here, here and here

Sausage that intellectual property lawyers find indigestible here