Grate expectations for cheese GI

The IPKat has often wondered what the European Commission's President, José Manuel Barroso, actually does during the long sunny days of August.  Now he knows: the man has been preventing the Old Continent from being riven by a cheese war. Indeed, what El Presidente has been doing is putting his hand to Commission Regulation 794/2011 approving amendments to the specification for a name entered in the register of protected designations of origin and protected geographical indications (Parmigiano Reggiano (PDO)) - which he did on 8 August of this very year.  What is this Regulation all about, you may wonder. Let the IPKat explain:

"Whereas:
(1) Pursuant to Article 6(2) of Regulation ... 510/2006 [on the protection of geographical indications and designations of origin for agricultural products and foodstuffs], Italy’s application for approval of amendments to the specification for the name ‘Parmigiano Reggiano’ [Wikipedia explains that 'Parmesan' is the French and English name for this cheese -- a rare example of the French and English agreeing on something, notes Merpel] was published in the Official Journal of the European Union ...

(2) Belgium, Denmark and the Association des Importateurs de fromage registered in Basel, Switzerland, objected to the registration pursuant to Article 7(1) of Regulation ... 510/2006. The objections by Belgium and Denmark were deemed admissible under points (a) and (c) of the first subparagraph of Article 7(3) of that Regu­lation [this means they were submitted in time]. The objection by the Association des Importateurs de fromage was deemed inadmissible on the grounds of its having been submitted after the deadline [No doubt the message they received from the Commission was "hard cheese!"]. 

(3) ...

(4) Denmark’s objection concerned the lack of justification for the obligation henceforth for cheese bearing the name ‘Parmigiano Reggiano’ to be portioned, grated and packaged within the defined geographical area. Following clarifications provided by Italy in the said consultations, Denmark withdrew its objection. [The Kats wonder what those clarifications might have been, in light of the next two Whereases]

(5) Belgium’s objection also concerned the lack of justifi­cation of such an obligation to portion, grate and package cheese bearing the name ‘Parmigiano Reggiano’ within the defined geographical area. 

(6) Given that no agreement was reached between Belgium and Italy within a time limit of 6 months, [Sounds a bit like the enhanced unitary patent system, doesn't it? Italy doesn't seem very agreeable these days ...] the Commission must adopt a decision in accordance with the procedure laid down in the third subparagraph of Article 7(5) and in Article 15(2) of Regulation ... 510/2006. 

This food is dry, says the
Kat: that confounded
ambient air must have
got to it!

(7) ... Italy states that the said obligation ‘is required because the marks identifying “Parmigiano Reggiano” on the whole cheese are lost or not visible on the grated or portioned product, making it necessary to guarantee the origin of the pre-packaged product [An empirical experiment in the Kats' kitchen can verify that even the best cheese marks do not withstand a vigorous grating]. It is also required because of the need to guarantee that the cheese is packaged quickly after portioning using appropriate methods to prevent the cheese being dehydrated, oxidised or losing its original “Parmigiano Reggiano” organoleptic characteristics. Cutting into the cheese wheel deprives the cheese of the natural protection provided by the crust which, being itself highly dehydrated, insulates the cheese very well against the ambient air.’ [Quite right, says Merpel: you have to watch out for that ambient air, it gets everywhere if you don't watch out -- and is particularly pervasive in Belgium, it seems]

(8) In the Commission’s view, such a reason, designed to ensure the origin of the product in question, ensure optimum control thereof and preserve the product’s physical and organoleptic quality is not vitiated by any manifest error of judgement on the part of the Italian authorities. 

(9) Belgium, furthermore, in its objection cited Article 7(3)(c) of Regulation ... 510/2006. Pursuant to that Article, statements of objection are admissible if they ‘show that the registration of the name proposed would jeopardise […] the existence of products which have been legally on the market for at least 5 years preceding the date of the publication provided for in Article 6(2).’ [The IPKat's imagination runs riot from time to time, but even he finds it hard to conceive of a set of facts in which the registration of a name would "jeopardise ... the existence of products which have been legally on the market for at least 5 years".  Might those products explode, perhaps, or dematerialise?] 

(10) Belgium failed to provide concrete evidence of potential damage arising to Belgian undertakings from the entry into force of the amendments to the specification. 

Even outside the defined geographical area, you have
to be very careful what you do with GIs ...

(11) It is, nonetheless, public knowledge that there are actually companies outside the defined geographical area engaged in portioning and/or packaging cheese bearing the name ‘Parmigiano Reggiano’. Article 13(3) of Regulation ... 510/2006 in this connection permits a transitional period of up to 5 years where a statement of objection has been declared admissible on the grounds that regis­tration of the proposed name would jeopardise the existence of products which have been legally on the market for at least 5 years preceding the date of the publication provided for in Article 6(2) .... Having regard in particular to ongoing contractual obligations and the need to adapt the market progressively ['progressively' means 'slowly'. This is important to appreciate when reading reports that 'progress' is being made] following the amendments to the specifi­cation for the name ‘Parmigiano Reggiano’, operators not established in the geographical area defined in the spec­ification should be allowed a transitional period of 1 year in so far as they were legally engaged in portioning and packaging ‘Parmigiano Reggiano’ outside the defined geographical area for at least 5 years prior to 16 April 2009. The duration of that transitional period is the same as that granted by Italy to operators engaged in portioning and packaging operations on its territory but outside the defined geographical area [Quite right, says Merpel. Belgians and Italians are all brothers, so long as they live outside the defined geographical area. The Commission can't make fish of one and fowl of the other]. 

(12) In the light of the above, the amendments should be approved and a transitional period of 1 year introduced. 

(13) The measures provided for in this Regulation are in accordance with the opinion of the Standing Committee on Protected Geographical Indications and Protected Designations of Origin".

You have to watch out for these Belgians, says the IPKat.  Here they are, seeking a right to carry on grating Parmesan under the noses of European's finest, and without the slightest attention to the ambient air.  Why, it's only a decade or so ago that the Belgians tried the same stunt against Spain, maintaining that they could buy quantities of Rioja wine, transport them right across Europe in tankers, driving them right through the ambient air if you please, in order to discharge their contents into Belgian bottles and still call them Rioja.  This attempt was scotched by the European Court of Justice (see note here).  For the avoidance of doubt, adds Merpel, there is no truth in the story that the Belgians argued before the court that putting Rioja into the tankers and driving it across the Pyrenees was designed to improve it ...

Recipes for Parmesan here and here

Global dispute with only local significance

"Where there's life ... there's Bud" --
but who, or what, is Bud in Europe?

Every few weeks there seems to be another giant-sized decision in the Battle of the Buds -- and here's the next installment: Case C 96/09 P Anheuser-Busch, Inc. v Budějovický Budvar, a ruling of the Court of Justice of the European Union (ECJ), delivered dew-fresh and delicious all the way from Luxembourg.

In this particular version of the battle of the two breweries for the heart and soul of Budweiser beer, Anheuser-Busch applied to register four Community trade marks (CTMs). The first was a figurative mark featuring the word Bud for goods in Classes 16, 21, 25 and 32. The other three applications were in respect of the word mark Bud, in Classes 32 (beers), 33 (alcoholic beverages), 35 (setting up databases, gathering data and information in databases), 38 (telecommunications, ie making available and supplying data and information, supplying and communicating information stored in databases), 41 (education, entertainment) and 42 (restaurant, bar and pub services; operating a database).

Budvar opposed, citing the following alleged prior rights: (i) a figurative Bud mark effective for ‘all types of light and dark beer’, in Austria, Benelux and Italy; (ii) the appellation of origin ‘Bud’, registered under the Lisbon Agreement in respect of beer, and effective in France, Italy and Portugal; (iii) an Austrian appellation of origin ‘Bud’ protected in Austria under a bilateral convention with the former state of Czechoslovakia.
The Opposition Division partially upheld Budvar’s opposition, in respect of ‘restaurant, bar and pub services’ covered by Anheuser-Busch’s fourth application. All other grounds of opposition were dismissed. The Opposition Division considered that Budvar had proved that it had a right to the appellation of origin ‘Bud’ in France, Italy and Portugal, though in relation to Italy and Portugal the arguments put forward by Budvar were not sufficiently specific to determine the scope of its protection under national law. It found that the ‘restaurant, bar and pub services’ covered by one of the applications were similar to the ‘beer’ covered by the appellation of origin ‘Bud’, there being a likelihood of confusion given that the signs concerned were identical. However, in respect of the other goods, and in the context of the applicable French law, Budvar had failed to demonstrate how the use of the mark applied for was likely to weaken or undermine the reputation of the appellation of origin concerned, when the goods covered were different.

Both parties appealed. The Board of Appeal dismissed all Budvar’s appeals but allowed that of Anheuser-Busch. It considered that Budvar no longer appeared to refer to its international figurative mark as the basis of its opposition, but solely to the appellation of origin ‘Bud’. It was however difficult to see how ‘Bud’ could be considered to be an appellation (or designation) of origin, or even an indirect indication of geographical origin. The Board also held that the evidence provided by Budvar to show use of the appellation of origin ‘Bud’ in Austria, France, Italy and Portugal was insufficient. Thirdly, it held that Budvar had not demonstrated that the appellation of origin gave it the right to prohibit use of the word ‘Bud’ as a trade mark in Austria or France.
Budvar appealed to the Court of First Instance (now the General Court), contending that (i) the sign BUD could be considered to be an appellation of origin, and (ii) the conditions of Article 8(4) of Regulation 40/94, in relation to an opposition based on the existence of an earlier non-registered mark of more than purely local significance, were satisfied. The Court of First Instance allowed the appeal.

In reaching its decision the Court of First Instance found that ‘Bud’ could be considered to be an appellation of origin and that it was protected under the Lisbon Agreement, and that the validity of a national mark may not be called into question in proceedings for registration of a CTM: when the contested decisions were adopted, the effects of the appellation of origin ‘Bud’ had not been declared invalid in France by a decision against which there was no appeal. Accordingly the Board of Appeal did not have the power to call into question the fact that the claimed earlier right was an appellation of origin. At most it could have suspended the opposition proceedings until a final judgment on the matter was delivered. The Court also found that the appellation ‘Bud’ remained protected under the bilateral convention, was still effective following the break-up of the Czechoslovak Socialist Republic.

The Court then upheld Budvar’s appeal in relation to the use in the course of trade of a sign of more than mere local significance. The Board of Appeal was wrong in law to apply, by analogy, the provisions of Community law relating to the ‘genuine’ use of an earlier trade mark. In the present context, an opposing party need only show that a sign had been used in the context of a commercial activity with a view to economic advantage. Subject to this, an appellation of origin registered under the Lisbon Agreement could not be deemed to have become generic. In any event, such appellations might enjoy protection in a particular territory even though they are only used in another territory.

On the facts, the Court held, Budvar had provided proof that the signs concerned were used in the course of trade and it was unnecessary to show that the signs were used prior to the contested CTM applications. At most, Budvar only had to show that the signs were used before publication of the trade mark applications in the Community Trade Marks Bulletin. The documents Budvar relied on were sufficient proof of use of the word ‘Bud’ even though they referred to a product on which the word ‘Bud’ was always accompanied by ‘strong’ or ‘super strong’.

In the context of an opposition based on the use in the course of trade of a sign of more than mere local significance, the Court held that it was sufficient for the sign to be used in the course of trade: the fact that it was identical to a trade mark did not mean that it was not used in the course of trade. Moreover, OHIM and Anheuser-Busch did not clearly specify how the sign ‘Bud’ had been used ‘as a trade mark’. There was no evidence that the expression ‘Bud’, displayed on the goods in question, referred to the commercial origin of the products more than to its geographical origin.

The word ‘significance’ in the formula “more than mere local significance” referred to the geographical extent of a sign’s protection: the Board of Appeal therefore erred in law when, as regards France, it linked proof of use of the sign concerned to the requirement that the right concerned must have a significance which is not merely local.

The Court then reviewed the effect and significance of litigation between the same parties and concerning the same sign in various national jurisdictions. The Court considered that those decisions were not binding upon it and that It was not conclusive that Budvar had not been able to prevent Anheuser-Busch’s distributor from selling beer in France under the Bud trade mark since, under Article 8(4), the opposing party does not need to establish that he has in fact already been able to prohibit use of a subsequent mark, but only that he has such a right available to him.

Anheuser-Busch then appealed to the ECJ.  Advocate General Cruz Villalón advised the ECJ to allow the appeal and remit the case to the General Court. Why? In particular he considered that (i) the requirement of ‘use in the course of trade’ in Article 8(4) is, like the other requirements in that provision, an independent concept which warrants its own interpretation; (ii) it is relevant to argue that an opponent relying on Article 8(4) has used the invoked sign as a trade mark rather than for the purpose of indicating the geographical origin of a product; (iii) for the purposes of Article 8(4) the use of the opponent’s sign must, where appropriate, be proved before the date of filing, rather than at any time up to the date of publication, of the opposed application for registration (iv) the judgment under appeal supplied an interpretation which was excessively literal and which adhered too closely to the wording of Article 8(4).

This morning the Court of Justice accepted the advice of the Advocate General, set aside the judgment of the (now) General Court which, it said, made three errors of law, and remitted the case for further consideration by that Court. The judgment has only just been posted on the Curia website and, at 221 paragraphs, will take some time to read, but the non-binding press release says:

" ... the General Court was incorrect in holding that it was sufficient, for the purpose of establishing that the sign ‘bud’ was of more than mere local significance, that the sign was protected in a number of States. The Court of Justice notes, in that regard, that, even if the geographical extent of the protection of the sign concerned is more than local, registration of a Community trade mark may be prevented only when the sign is actually used in a sufficiently significant manner in the course of trade in a substantial part of the territory in which it is protected. Use in the course of trade must also be assessed separately for each of the territories in which the sign is protected. 

Next, ... the General Court also made an error in holding that the Regulation did not require the sign ‘bud’ to have been used in the territory in which it is protected and that use in a territory other than the territory of protection may be sufficient to prevent registration of a new trade mark, even where there is no use at all in the territory of protection. In that connection, ...it is only in the territory in which the sign protected, in its entirety or in a part of it, that the exclusive rights attached to the sign may enter into conflict with a Community trade mark.

Finally, ... in holding that it had to be shown only that the sign concerned was used in the course of trade before publication of the trade mark application and not, at the latest, as at the date of the application, the General Court made a further error of law. In view, in particular, of the considerable period of time which may elapse between the filing of an application and its publication, applying the test relating to the date of the application provides a better guarantee that the use claimed for the sign concerned is real and not an exercise whose sole aim has been to prevent registration of a new trade mark. Furthermore, as a general rule, where the sign concerned is used exclusively or to a large extent during the period between filing of the application for a Community trade mark and publication of the application, that will not be sufficient to establish that the use of the sign in the course of trade has been such as to prove that the sign is of sufficient significance. 

The Court of Justice, while rejecting the other grounds of appeal raised by Anheuser-Busch, sets aside in part the judgment of the General Court in so far as the judgment makes the three errors of law thus found. Since the state of the proceedings does not permit final judgment to be given by the Court of Justice, the latter refers the case back to the General Court to give judgment afresh".

The IPKat was rather expecting this.  Though he has a tendency to prefer the sort of literalism that the General Court employed, he believes that the ECJ's ruling is more in line with the legislative intent than was that of the inferior court.  Merpel adds, the first of Anheuser-Busch's four applications was filed on 1 April 1996.  It's almost 15 years to the day later, and we still have the prospect of a rehearing by the General Court which itself is subject to a possible -- and in the case of these two parties highly likely -- further appeal to the ECJ.  Is there truly no better path to Community trade mark registration?

Something to w(h)ine about?

One unhappy company today must be Spanish wine grower Abadía Retuerta, which probably feels that the whole of the rest of the world is wrong. Today, in Case T 237/08 Abadía Retuerta, SA v OHIM, the General Court (Third Chamber) became the second tribunal to dismiss its appeal against the refusal of the Office for Harmonisation in the Internal Market to allow registration of its beloved trade mark CUVÉE PALOMAR for wines in Class 33. The IPKat has little doubt, given the pride and the passion with this case has been fought so far, the Court of Justice will soon have the chance to dismiss the appeal, possibly followed by the Court of the Galaxy and the Supreme Court of the Universe.

As recently as 2006 Abadía Retuerta, which owned the Pago Palomar estate, applied to register as a Community trade mark the words CUVÉE PALOMAR for wines. The examiner said "no", citing Article 7(1)(j) of the Community Trade Mark Regulation which states that

‘The following shall not be registered: … (j) trade marks for wines which contain or consist of a geographical indication identifying wines … with respect to such wines … not having that origin.’

Abadía Retuerta appealed unsuccessfully to the First Board of Appeal which recalled that, in accordance with the case law of the Court of Justice, since the European Community is a party to TRIPs, the court must interpret its trade mark legislation, as far as possible, in the light of the wording and purpose of that agreement. Comparison of Articles 22(3) and 23(2) of TRIPs showed that the latter, which was incorporated into Article 7(1)(j), constituted a lex specialis which laid down a specific prohibition on registration of geographical indications identifying wines and spirits. That prohibition was absolute and unconditional, not requiring that the use of the geographical indication in the mark for those goods to be deceptive with regard to the actual place of origin, a condition to which application of the general prohibition on registration of geographical indications referred to in Article 22(3) of TRIPS was explicitly subject.

The Board of Appeal found that el Palomar was the name of a local administrative area in Spain, in the Valencian subregion Clariano, and that it constituted under applicable Community and national law an area of production protected by the registered designation of origin ‘Valencia’. There being a high degree of similarity between the local administrative area name el Palomar and the word ‘palomar’ included in the mark applied for, its use was prohibited under Article 2(2) of Spanish Ministerial Order of 19 October 2000, since the applied-for Community trade mark had not been sought to designate wines from that area of origin. The Board of Appeal added that, while the official name of the local administrative area was ‘el Palomar’, it was ‘palomar’ alone which identified that specific area -- since recognition cannot depend on the presence or absence of the definite article ‘el’ (anyway, the local administrative area in question was identified by the name Palomar, without an article, in the Ministerial Order of 19 October 2000).

In the light of this, the Board of Appeal concluded that registration of the Community mark applied for to designate wines should be refused under Article 7(1)(j) since it contained a false geographical indication. That finding was equally applicable to the amended description of the goods covered by the application, namely ‘wines from an estate known as ‘Pago Palomar’, situated in the local administrative area of Sardón de Duero (Valladolid, Spain)’: this didn't help and was a bit of an own-goal, since it reinforced the fact that the mark applied for contained a geographical indication which did not correspond to the origin of the goods which it described, contrary to Article 7(1)(j).

Abadía Retuerta appealed further to the General Court, but to no avail. According to that Court (which gave lots more reasons than those listed below):

* EU Member States are competent to use the name of a local administrative area, a part of it or a small locality to designate a quality wine psr [produced in a specified region]. In such a case, that name cannot be used to designate products of the wine sector which do not come from that local administrative area (or part of it) or from that small locality and to which that name has not been assigned in accordance with the applicable Community and national rules. It's up to the Member States to determine, for their respective territories, the geographical indications which they want to protect.

* Community protection of geographical indications is based on the geographical indications as determined by laws of the Member States in compliance with the relevant provisions of Community law. That protection does not result from an autonomous Community procedure or even from a mechanism under which the geographical indications recognised by Member States are incorporated in a binding Community measure.

* CUVÉE PALOMAR wine did not come from the local administrative area el Palomar and consisted of a geographical indication which identified a quality wine psr even though that wine did not have that origin. Accordingly the Board of Appeal was right to find that the mark applied for was unregistrable on the basis of the absolute ground for refusal laid down in Article 7(1)(j).

* Abadía Retuerta could not argue that, since a part of its estate contained the name Palomar, including that name in the mark applied for did not constitute a false or erroneous indication. It was irrelevant that the name was not erroneous, since the only condition for the application of the absolute ground for refusal laid down in Article 7(1)(j) is that the mark contains or consists of a geographical indication identifying a wine in respect of such wine not having that origin.

* Likewise it made no difference that the mark applied for did not include the name el Palomar but merely the word ‘palomar’. Such an interpretation of Article 7(1)(j) would clearly clash with the objective of protecting geographical indications for quality wines psr pursued by national and Community law. For the absolute ground for refusal referred to in Article 7(1)(j) to apply, it suffices that those marks contain or consist of elements which enable the geographical indication in question to be identified with certainty, without it being necessary to consider the definite or indefinite articles which may possibly form a part of them, though this would not be so where the geographical indication consisted of a name of a place containing an article which is inseparable from that name and which gives that name its own, autonomous meaning.

* The fact that a name which benefits from a registered designation of origin is unknown to the general public or the relevant class of persons, or that it has many meanings which moderate its geographically indicative nature, is irrelevant for the application of the absolute ground for refusal laid down in Article 7(1)(j).

Wine reviews: what The Passionate Foodie has to say here; Snooth here

Cat wine here

Second time round in Budĕjovický Budvar: GI Regulation reigns supreme

No-one expected Case C-478/07 Budĕjovický Budvar, národní podnik v Rudolf Ammersin GmbH to be laught-a-minute stuff -- and indeed it isn't. This was a second-time-round reference for a preliminary ruling from the Handelsgericht Wien (Austria), in which the Court of Justice of the European Communities was asked to revisit some unfinished business that needed further attention in Case C‑216/01 Budĕjovický Budvar [2003] ECR I‑13617. Essentially, Czech Bud wanted to stop Ammersin importing American Bud from outside the EU into Austria. There was an earlier bilateral agreement between EU Member State Austria and the former (non-EU) Czechoslovakia which, Czech Bud said, entitled it to prevent such imports. The Court, hearing a reference for a preliminary ruling made by the same national court, held then that

* European law did not preclude the application of a provision of a bilateral agreement between a Member State and a non-member country under which a simple and indirect indication of geographical source from that non-member country is accorded protection in the importing Member State, regardless of whether there was any risk of consumers being misled. Accordingly the import of a product lawfully marketed in another Member State may be prevented.

* No such bilateral agreement can prevent importation of goods sold under a name which, in the importing country, does not directly or indirectly refer to the geographical source of the product that it designates, again regardless of whether there is any risk of consumers being misled.

* the court of a Member State can apply the provisions of bilateral agreements, even where those provisions are contrary to the EC Treaty rules, where they concern an obligation resulting from agreements concluded before the date of the accession of that Member State to the European Union.

Second time round, Europe's finest legal brains have been asked to clarify what precisely they meant. Asked the referring court:

"(1) In its judgment in Budĕjovický Budvar the Court of Justice defined the requirements for the compatibility with Article 28 EC of the protection of a designation as a geographical indication which in the country of origin is the name neither of a place nor of a region, namely that such a designation must:

– according to the factual circumstances and

– perceptions prevailing in the Czech Republic, designate a region or a place in that State,

– and that its protection must be justified there on the basis of the criteria laid down in Article 30 EC.

Do those requirements mean:

– that the designation as such must fulfil a specific geographical indication function referring to a particular place or a particular region, or does it suffice that the designation is capable, in conjunction with the product bearing it, of informing consumers that the product bearing it comes from a particular place or a particular region in the country of origin;

– that the three conditions are conditions to be examined separately and to be satisfied cumulatively;

– that a consumer survey is to be carried out for ascertaining perceptions in the country of origin, and, if so, that a low, medium or high degree of recognition and association is required in order for protection to be available;

– that the designation must actually have been used as a geographical indication by several undertakings, and not just one undertaking, in the country of origin and that use as a trade mark by a single undertaking precludes protection?

(2) Does the fact that a designation has not been notified or its registration applied for either within the six-month period provided for in Regulation No 918/2004 or otherwise in terms of Regulation No 510/2006 mean that existing national protection, or in any case protection that has been extended bilaterally to another Member State, becomes void if the designation is a qualified geographical indication, within the meaning of Regulation No 510/2006, under the national law of the State of origin?

(3) Does the fact that, in the context of the Act of Accession … a new Member State, the protection of several qualified geographical indications for a foodstuff has been claimed by that Member State in accordance with Regulation No 510/2006 mean that national protection, or in any case protection that has been extended bilaterally to another Member State, for another designation for the same product may no longer be maintained, and Regulation No 510/2006 [is exhaustive in its effect] to that extent?".

The Court has ruled this morning as follows:

"1. It follows from paragraph 101 of the judgment of 18 November 2003 in Case C‑216/01 Budĕjovický Budvar that:

– in order to determine whether a designation can be considered to constitute a simple and indirect indication of geographical provenance, ... the national court must ascertain whether, according to factual circumstances and perceptions prevailing in the Czech Republic, that designation, even if it is not in itself a geographical name, is at least capable of informing the consumer that the product bearing that indication comes from a particular place or region of that Member State;

– the national court must, in addition, ascertain, once again in the light of factual circumstances and perceptions prevailing in the Czech Republic, whether ... the designation at issue in the main proceedings has not, either at the time of the entry into force of the bilateral instruments at issue in the main proceedings or subsequently, become generic in that Member State, the Court of Justice of the European Communities having already held ... that the aim of the system of protection introduced by those instruments falls within the sphere of the protection of industrial and commercial property ...;

– in the absence of any Community provision in that regard, it is for the national court to decide, in accordance with its own national law, whether a consumer survey should be commissioned for the purpose of clarifying the factual circumstances and perceptions prevailing in the Czech Republic in order to ascertain whether the designation ‘Bud’ at issue in the main proceedings can be classified as a simple and indirect indication of geographical provenance and has not become generic in that Member State. It is also in the light of that national law that the national court, if it finds it necessary to commission a consumer survey, must determine, for the purposes of making the necessary assessments, the percentage of consumers that would be sufficiently significant; and

– Article 30 EC does not lay down specific requirements as to the quality and the duration of the use made of a designation in the Member State of origin for its protection to be justified in the light of that article. Whether such requirements apply in the context of the dispute in the main proceedings must be determined by the national court in the light of the applicable national law, in particular the system of protection laid down by the bilateral instruments at issue in the main proceedings.

2. The Community system of protection laid down ... on the protection of geographical indications and designations of origin for agricultural products and foodstuffs is exhaustive in nature, with the result that that regulation precludes the application of a system of protection laid down by agreements between two Member States, such as the bilateral instruments at issue in the main proceedings, which confers on a designation, which is recognised under the law of a Member State as constituting a designation of origin, protection in another Member State where that protection is actually claimed, despite the fact that no application for registration of that designation of origin has been made in accordance with that regulation".

The IPKat is intrigued at the possibility of a trial court in one Member State ordering the carrying out of a consumer survey in another in order to ascertain consumer perceptions relating to geographical identification and genericity. It appears to him that there is no single approved methodology or standard of proof for such surveys across the European Union. What if, for example, a court in State A orders a survey in State B which fulfils the lower standards of proof in State A than are demanded in State B?

Merpel says, this is scandalous. These proceedings were commenced in Austria in July 1999 and the original interim injunction is now just one month short of its 10th birthday -- and the case still has to be heard by the Handelsgericht Wien. It's not as if we're talking about some amazingly complex issue: this is about crates of beer, bearing the three-letter word BUD, crossing one small border. The system of references of preliminary issues looks great in theory, but stinks in practice.

Shelf-life of beer: how long does it last? Click here and here
Beer smugglers here

Birmingham to protect the Balti?; Google Book antitrust probe

Will Brum GI plan curry favour?

The IPKat is a little puzzled to read the news on the BBC that Birmingham City Council is pondering whether to get protected geographical status for the name Balti. A Balti is a hybrid British-South Asian curry, which is said to have originated in Birmingham in the 1970s. Unlike other curry dishes, they are subjectecd to high temperatures for the final 10 minutes of cooking. They are served in restaurants across the UK, without rice, in a special metal dish. While their Pakistani predecessor would have been slow-cooked and served on the bone, the meat in a Balti is served off the bone. The proposal has been welcomed by curry aficionados, who have expressed concern that recently the dish has been served on plates.

The IPKat thinks this smacks of protectionism. It looks like an attempt to turn back the clock and exclude others who are using the method of cooking from identifying it as such.

Google Book Deal - antitrust investigation

The LA Times reports that the US Department of Justice has notified the judge overseeing the Google Book Deal case that it is investigating the Google Book Deal for potential antitrust violations. The concern arises over aspects of the agreement in relation to orphan works. It would see Google being uniquely entitled to scan and distribute out-of-print works, arguable giving Google a monopoly on such works, and excluding other companies from similar practices.

The IPKat doubts whether this will be an easy decision for the DOJ. While the agreement may raise monopolistic concerns, the Kat suspects that the creation of the resource is such a massive undertaking that it might only come into existence if exclusivity is given.

Red faces over Leicestershire cheese

The Times reports that attempts to obtain an appellation of origin for Red Leicester have come to a halt after the various makers of the cheese could not agree on the recipe. Despite securing the backing of a local councillor for protection of the cheese under the name 'Leicestershire cheese' (presumably Red Leicester was thought to be generic), the two main makers of the cheese, David and Jo Clarke and Long Clawson dairy can't agree on whether a starter, commonly used in Swiss cheeses should be included. Yes, says Long Clawson, but no say the Clarkes, who insist that the addition of the starter alters the flavour of the cheese. It appears therefore that the application is now on hold, although the local councillor, Mr O'Callaghan, hopes that the process will eventually go ahead. 'The most difficult part of the whole process in applying for protection is agreeing what you are trying to protect' he is quoted as saying.

The IPKat is puzzled. How traditional can this cheese be, and how much of a reputation can it have if the people who make it can't agree on the recipe?

Sausage GI applicants 'meat' their match

The IPKat's friend Marc Mimler, a PhD student at the Queen Mary Intellectual Property Research Institute (QMIPRI), has taken a keen interest in the fate of the Münchner Weisswurst. A ruling concerning this passion-generating sausage was tastily served to readers of the Class 46 weblog -- as luck would have it, by IPKat team member Birgit -- and Marc has offered a version of events for IPKat readers too. Marc writes:

"The German Federal Patent Court (Bundespatentgericht) released a judgment last Tuesday on the protection of the term "Münchner Weisswurst" as a geographical indication according to Article 126 ff. of the German Trade Mark Act which implemented Regulation 510/2006 on geographical indications and designations of origin. The press release by the court can be found in German here.

Münchner Weisswurst is a boiled sausage which is usually consumed with pretzels, sweet mustard and wheat beer. It was allegedly created in Munich on February 22, 1857 in the (in English, "Eternal light") Inn by the inn´s butcher Joseph ("Sepp")Moser. It is popular in Munich and the whole of Bavaria, and has been hailed as an outstanding sample of the Bavarian attitude to life. Many Weisswurst aficionados still abide by the rule that the Weisswurst "must not hear the 12 o´clock bells ringing", meaning that it should ideally be consumed in the morning (again, traditionally along with wheat beer).

The Society for the protection of the Münchner Weisswurst (Schutzgemeinschaft „Münchner Weisswurst“) filed an application with the German Patent and Trade Mark Office in 2005 to register the term Münchner Weisswurst as a geographical indication. If successful, production of the Weisswurst, along with the use of the term Münchner Weisswurst, would have only been permitted for butchers located in the City of Munich and its surrounding administrative council.

The German Patent and Trade Mark Office held that the term Münchner Weisswurst was eligible for protection as a geographical indication. This decision was appealed by several competitors and federations of producers, who stated that it would spell doom for the Weisswurst if competition would have been impaired by its protection as a geographical indication.

The Federal Patent Court allowed the competitors' appeal on the ground that Weisswürste have been produced in other regions of Bavaria and not just in and around Munich for decades. The sausage is a regional, mostly southern Bavarian speciality and is not limited to the Munich area. The court added that assessment of whether a term is eligible for protection as a geographical indication depends on an objectively determined assement of the prevailing conditions in the market, and only to a lesser extent on public opinion polls, this being in line with the most decisions of the European Court of Justice on geographical indications.

The decision however should not be perceived as being a massive disappointment to the local community of Münchner Weisswurst fans. The question of whether this Weisswurst originated from Munich is highly debated since a similar sausage, the "boudin blanc", was created by a French cook before Sepp Moser was even born".

Bud again, as trade mark dispute overspills again into GI war

Those Budweiser disputes just won't go away. On 16 December the Bud appellation scored something of a victory before the Court of First Instance in four Community trade mark opposition appeals in Joined Cases T-225/06, T-255/06, T-257/06 and T-309/06 Budějovický Budvar, národní podnik v Office for Harmonisation in the Internal Market, Anheuser-Busch, Inc (see IPKat post here for a relatively intelligible account).  

Right: bearing in mind the recent surge of ECJ litigation involving German beer names, Europe's highest court has just substituted for the Advocate General's robes an altogether more appropriate garb

Today in Case C‑478/07  Budějovický Budvar National Corporation v Rudolf Ammersin GmbH, a reference for a preliminary ruling from the Handelsgericht Wien, Austria, the fog that has surrounded the status of Bud scarcely lifted, though Advocate General Damaso Ruiz-Jarabo Colomer has delivered a mighty 138-paragraph Opinion that has sought to analyse and tidy up some of the issues.

In short (thanks to Bloomberg's Stephanie Bodoni), Budvar was dealt a potential setback in its battle with Anheuser-Busch InBev NV for the rights to the Bud and Budweiser names: according to the Advocate General, Budvar may keep the rights in Austria only for a name that is (i) a simple geographical indication, (ii) which refers to a region only and (iii) Czech consumers can be shown to associate the name with beer from a specific region.

Budvar says it owns the rights because its beer comes from Ceske Budejovice, or Budweis in German. Budvar claims that Bud has been a national geographical indication since 1975 in the Czech Republic and that, in 1976, this protection was extended by a bilateral agreement to Austria.  Anheuser-Busch InBev, which is fighting to lift an injunction that has prevented it from selling beer under the name American Bud in Austria since 1999, says it owns the rights to Bud or Budweiser in 23 out of the 27 EU countries. The brewers are said to be involved in more than 20 court cases and almost 60 administrative proceedings worldwide.

To quote the words of the Advocate General himself:

(1) The requirements defined by the Court of Justice in its judgment of 18 November 2003 in Case C‑216/01 Budějovický Budvar for the protection as a geographical indication of a designation which in the country of origin is the name neither of a place nor of a region [ie Bud] to be compatible with Article 28 EC:

(1.1) mean that the name must be sufficiently clear to call to mind a product and its origin;

(1.2) are not three different requirements which must be satisfied separately;

(1.3) do not require a consumer survey or define the result which has to be obtained in order to justify protection;

(1.4) do not mean that, in practice, the name must be used in the country of origin as a geographical indication by more than one undertaking and says nothing about its use as a trade mark by a single undertaking.

(2) When a designation has not been notified to the Commission under Council Regulation ... 510/2006 ... national protection in force or protection bilaterally extended to another Member State becomes invalid if the designation is a qualified geographical indication under the law of the State of origin, having regard to the fact that Regulation No 510/2006 is exclusive as regards the indications within its scope of application.

(3) The fact that the Treaty of Accession between the Member States of the European Union and a new Member State introduces protection for various qualified geographical indications for a foodstuff under Regulation No 510/2006 does not preclude maintenance of existing national protection or protection bilaterally extended to another Member State for a different name for the same product, unless that name is an abbreviation or a part of any of the geographical indications protected at Community level for the same product. Regulation No 510/2006 does not have exclusive effect to that extent, without prejudice to the response to the second question referred".

A ruling may be expected in around six months time, unless the European Court of Justice is so excited about hearing another Bud/weis case that its judges drop everything else ...

Another budding beer dispute, but this time it's Bavaria

Via the IPKat's informative friend Stephanie Bodoni (Bloomberg) comes news of the European Court of Justice hearing today in Case C-343/07 Bavaria N.V. and Bavaria Italia Srl v Bayerischer Brauerbund e.V. In this reference for a preliminary ruling Bavaria NV, the Netherlands' second-biggest beer brewer, is challenging a group of German brewers that want it to stop using the name Bavaria on that beautiful golden beverage. At issue is the validity of EU rules (Regulation 2081/1992, now consolidated as Regulation 510/2006) that gave the Bavarian brewers rights in the terms "Bayerisches Bier", the German term for "Bavarian beer", and whether they can block Bavaria's trade marks. Says another of the IPKat's friends Massimo Sterpi (left), arguing for the Dutch brewers:

"The Bavaria trade marks were valid, are valid and were registered before the EU rights were given to the Bavarian brewers". Those rules "can't be used as a weapon to attack earlier trade marks".

The Bavarian brewers' association disagrees. It received EU protection for the name "Bayerisches Bier" in 2001, then sued Bavaria NV in Germany, Spain and Italy, seeking to cancel the company's trade mark rights or to force it to stop using the Bavaria name on its brew. According to their spokesman Walter Koenig:

"In Italy, which is our number one export market, the distribution of Bavaria beer by the Dutch brewer confuses Italian consumers. We don't want to have others take this business away".

Lawyers for various EU member states and the commission asked Bavaria why it didn't seek to challenge the German brewers' right in 2001, saying that now it is now too late to do so. But Sterpi replied that Bavaria -- who are supported by the Netherlands government -- believed then that the EU Regulation allowed its trade marks to co-exist with the Bavarian brewers' rights.

The IPKat wonders why it is that beer brands beginning with the letter "B" seem to be so troublesome. Just when it seems that the Budweiser saga is drawing to a close, the Bavarians spring into action. Merpel says, if Bavaria beer from the Netherlands is confusing, after a beer or two the terms "Dutch" and "Deutsch" can have much the same effect.

To read the questions that were referred to the ECJ, click here
Bavaria in Switzerland here; Bavaria in South Africa here; Bavaria in Colombia here

Gold in China; Mother wins round 1 of YouTube dancing baby case

Another British success in China

No, it's not the Olympics, but rather the news in the Scotsman that the Scotch Whisky Association has succeeded in gaining geographical indication protection in China for the term 'Scotch Whisky'. China imports 17 million bottles of Scotch a year.

The IPKat is too busy celebrating this Scottish triumph in traditional fashion to comment.


Fair use take-down victory

The LA Times reports that Stephanie Lenz, a mother who posted a clip of her baby dancing to the artist formerly known as the artist formerly known as Prince's song, 'Let's Go Crazy' has won the first stage of her battle against Universal Music (see earlier IPKat post here). Ms Lenz's clip was removed from YouTube after the site received a takedown notice under the Digital Millennium Copyright Act from Universal, the holder of the copyright in the song. The clip was reinstated after a month, but Lenz sued under the DMCA, pointing to the requirement therein that copyright owners can only demand the taking down of a work if they have "a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law."

Universal argued that copyright holders, in making this assessment, did not need to take into account whether the use made by the subject of the notice was fair use, since fair use is a defence, rather than a legal right. Not so, according to Judge Jeremy Fogel, who states:

"Even if Universal is correct that fair use only excuses infringement, the fact remains that fair use is a lawful use of a copyright. Accordingly, in order for a copyright owner to proceed under the DMCA with “a good-faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent or the law,” the owner must evaluate whether the material makes fair use of the copyright. 17 U.S.C. § 512(c)(3)(A)(v)."

However, he went on the conclude that Lenz was unlikely to win the case at full trial as she would need to show subjective bad faith on the part of Universal, i.e. that when it issued the takedown notice, it knew it was making a groundless threat of infringement.

The LA Times observes that the need to evaluate fair use will make it difficult for copyright owners to use automated 'bots to root out works which borrow from copyright works and issue take down notices ('bots can't evaluate whether use is fair).

The IPKat reckons that this is a good decision. On the whole, copyright owners are likely to be in a better position to evaluate fair use than individuals who post materials, and hosting sites, if forced to evaluate fair use may take a risk-averse strategy that would prevent them from allowing many socially useful works. The IPKat reckons that unless copyright owners are forced to evaluate fair use, many works which constitute fair uses will just disappear if made the subject of take-down notices since only exceptional individuals like Ms Lenz will persevere in getting their work reinstated.

Indian Supreme Court fails to hit the bottle

The IPKat has learnt from Times of India that lovers of finest Indian whisky can breath a sigh of relief. The Indian Supreme Court has ruled that Indian distiller Khoday India Ltd remains at liberty to sell its whisky under the Peter Scot name. In a case which took only 20 years to proceed through the Indian judicial system, the Scotch Whisky Association challenged the Peter Scot trade marks, which was registered in 1974. Khoday argued that because the SWA waited 13 years to challenge the trade mark, its claim was time-barred.

Reports don't make it clear whether the Supreme Court decided in Khoday's favour because consumers just wouldn't be confused, or because the SWA waited so long to bring its action. The IPKat though can see the merits of the reasoning based on lapse of time. If an IP owner knows that someone else may be infringing its IP, but stands by and watches as that someone invests extensively in a business built on that IP, it is unconscionable for the IP owner to decide to challenge the business at a much later date.

Last week in the European Parliament...

ZDNet reports that the European Parliament has approved two reports on the cultural industries which cast doubts on combating copyright infringement through cutting off offenders’ internet access.

A visit to the European Parliament’s website doesn’t make things much clearer.

One report calls for greater support for industries such as publishing and the music industry which are threatened by piracy.

In another report, French Socialist Guy Bono notes

“Criminalising consumers who are not seeking to make a profit is not the right solution to combat digital piracy…The central message of this report is to find a balance between the possibility to access cultural events and content while ensuring cultural diversity and genuine income to the right holders,"

Also discussed last week, and of interest to IP lawyers, was a European heritage label for goods, memorials and monuments to combat the “threat” of the globalisation of culture.

The IPKat reckons that rather than this being a contradiction, perhaps the EP is getting this right. There is a need to protect copyright owners, but not in a way that is disproportionate to the interests of the rest of society.

Cheesy decision from the ECJ

Bloomberg reports that the ECJ has ruled that "Only cheeses bearing the protected designation of origin 'Parmigiano Reggiano' can be sold under the name 'Parmesan'". However, it has also stated that it is for Italy (the home country of the registration) and Germany to take action to ensure that no one else uses the name.

The IPKat is intrigued. How can Italy take action where the infringement is in Germany? More to follow when the actual decision comes out.

Cyprus fails to delight Turkey

The IPKat slipped up in failing to note the battle between Turkey and Cyprus regarding Turkish delight (see this article in the Times). Cyprus is to gain PGI recognition for Loukoumi Yeroskipou, used to describe the sweet which is also known as lokum, or Turkish delight. While the Turks are casting aspersions on the ability of Greek Cypriots to make lokum, the Cypriots are responding that Turkey shouldn’t be able to control the name, since the sweet is also produced in Greece and Lebanon. In fact, it seems that the Cypriots aren’t trying to control the production of the sweet, but rather to raise to the profile of their loukoumi in export markets.

The IPKat notes that now that EU GI registration has been opened up to third countries, Turkey could equally well apply for registration. Regarding the scope of registration, the IPKat wonders whether consumers could be misled, or whether Turkey could gain any real advantage from evoking the Cypriot registration, bearing in mind that Turkish production is so much more famous. Meanwhile, ever the sceptic, Merpel notes the fabulous timing of a battle about Turkish delight just before Christmas.