Opinion of the Advocate General — ECLI:EU:C:2008:745
Date: 2008-12-18
Language of the case: Italian
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Agriculture and Fisheries;Foodstuffs;Intellectual, industrial and commercial property;Consumer protection
Procedure: Reference for a preliminary ruling
Origin: Italy

Summary of the Judgment 1. Plea of illegality – Incidental nature – Action brought before a national court to challenge the legality of a regulation relating to the registration of certain geographical indications (Arts 230 EC and 241 EC; Council Regulation No 1347/2001) 2. Agriculture – Uniform legislation – Protection of geographical indications and designations of origin for agricultural products and foodstuffs – Regulation No 2081/92 (Arts 32 EC, 33 EC, 37 EC and Annex I EC; Council Regulation No 2081/92) 3. Agriculture – Uniform legislation – Protection of geographical indications and designations of origin for agricultural products and foodstuffs – Regulation No 2081/92 (Council Regulation No 2081/92, Arts 7 and 17) 4. Agriculture – Uniform legislation – Protection of geographical indications and designations of origin for agricultural products and foodstuffs – Regulation No 2081/92 (Council Regulation No 2081/92) 5. Agriculture – Uniform legislation – Protection of geographical indications and designations of origin for agricultural products and foodstuffs – Regulation No 2081/92 (Council Regulation No 2081/92, Art. 17) 6. Agriculture – Uniform legislation – Protection of geographical indications and designations of origin for agricultural products and foodstuffs – Regulation No 2081/92 (Council Regulation No 2081/92, Art. 3(1)) 7. Agriculture – Uniform legislation – Protection of geographical indications and designations of origin for agricultural products and foodstuffs – Regulation No 2081/92 (Council Regulation No 2081/92, Art. 14(2) and (3)) 1. It is a general principle of Community law that an applicant, in proceedings brought under national law against the rejection of his application, is entitled to plead the unlawfulness of a Community measure on which the national decision taken in his regard is based, and the question of the validity of that Community measure may thus be referred to the Court in proceedings for a preliminary ruling. However, this general principle, which has the effect of ensuring that every person has or will have had the opportunity to challenge a Community measure which forms the basis of a decision adversely affecting him, does not in any way preclude a regulation from becoming definitive as against an individual with respect to whom it must be regarded as an individual decision whose annulment he could undoubtedly have sought under Article 230 EC, a fact which prevents that individual from pleading the unlawfulness of that regulation before the national court. That does not apply to the commercial companies Bavaria and Bavaria Italia, which are the proprietors of several trade marks and figurative elements containing the word ‘Bavaria’ and which may not be regarded, for the purpose of the fourth paragraph of Article 230 EC, as undoubtedly ‘directly and individually concerned’ by Regulation No 1347/2001 supplementing the Annex to Regulation No 1107/96 on the registration of geographical indications and designations of origin under the procedure laid down in Article 17 of Regulation No 2081/92. That Regulation No 1347/2001 seeks to confer on the product ‘Bayerisches Bier’ the protection for protected geographical indications (PGIs) provided for by Regulation No 2081/92 and permits the use of the pre-existing mark Bavaria to be continued in compliance with the conditions provided for in Article 14(2) of Regulation No 2081/92, notwithstanding the registration of the PGI ‘Bayerisches Bier’. Consequently, even if Regulation No 1347/2001 were capable of affecting Bavaria and Bavaria Italia’s legal position, that effect could not be regarded as resulting directly from that regulation. Consequently, Bavaria and Bavaria Italia are entitled, in an action brought in accordance with national law, to plead the invalidity of Regulation No 1347/2001 even though they did not bring an action for its annulment before the Community judicature within the period laid down in Article 230 EC. (see paras 38-39, 41-44, 46) 2. As regards the argument that Articles 32 EC and 37 EC do not constitute the appropriate legal basis for the adoption of Regulation No 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, on the ground that beer is not one of the agricultural products mentioned in Annex I to the Treaty, it must be stated that legislation which contributes to the achievement of one or more of the objectives mentioned in Article 33 EC must be adopted on the basis of Article 37 EC, even though, in addition to applying essentially to products falling within Annex I to the Treaty, it also covers incidentally other products not included in that annex. The primary purpose of that regulation, as is pointed out in the second recital in the preamble to that regulation, is the achievement of the objectives mentioned in Article 33 EC, and that that regulation covers principally products included in Annex I to the Treaty. Furthermore, although it is true that beer is not expressly mentioned in that annex, the fact remains that most of its ingredients are, and that its inclusion in the scope of Regulation No 2081/92 is consonant with the purpose of that regulation and in particular with the achievement of the objectives mentioned in Article 33 EC. (see paras 50-51) 3. Even though Article 17(2) of Regulation No 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs expressly provides that Article 7 of that regulation is not applicable in the simplified registration procedure, and therefore, in the context of that procedure, excludes the right of objection by legitimately concerned third parties provided for in Article 7(3) of the regulation, a registration under that procedure also presupposes that the names conform with the substantive requirements of the regulation. In any event, the interpretation to be given to Article 17 of Regulation No 2081/92 certainly does not mean that interested third parties who consider their legitimate interests infringed by the registration of a name cannot obtain a hearing and state their objection before the Member State requesting that registration, inter alia in accordance with the principles relating to judicial protection, as results from the system of that regulation. Therefore, those interested parties may also state their objection with regard to the application for registration concerned in the simplified procedure under Article 17 of that regulation. It is for the national courts to rule on the lawfulness of an application for registration of a designation under Article 17 of that regulation on the same terms as those by which they review any definitive measure adopted by the same national authority which is capable of adversely affecting the rights of third parties under Community law, and, consequently, to regard an action brought for that purpose as admissible, even if the domestic rules of procedure do not provide for this in such a case. (see paras 54-57) 4. In the system established by Regulation No 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs there is a division of powers between the Member State concerned and the Commission. Under that system, it is for the Commission, before registering a designation in the category applied for, to verify, in particular, first, that the specification which accompanies the application complies with Article 4 of Regulation No 2081/92, that is to say that it contains the required information and that that information does not appear to contain obvious mistakes, and, second, on the basis of the information contained in the specification, that the designation satisfies the requirements of Article 2(2)(a) or (b) of that regulation. The same is true where, under Article 15 of that regulation, the measures envisaged by the Commission are not in accordance with the opinion of the Committee established by that article or there is no such opinion, and the decision on registration is adopted by the Council on a proposal from the Commission. (see paras 64, 67-68) 5. Unlike Article 5 of Regulation No 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, which provides expressly that, in the normal procedure, the application for registration is to be accompanied by the specification, Article 17 of the regulation is confined to requiring the Member States to notify the Commission which of their legally protected names or, in those Member States where there is no protection system, which of their names established by usage they wish to register. In those circumstances, Article 17 of the regulation cannot be interpreted as requiring the Member States to communicate, within the six months’ time-limit, the final version of the specification and the other relevant documents, so that any amendment of the specification originally submitted would lead to the application of the normal procedure (see para. 76) 6. When assessing the generic character of a name, it is necessary, under Article 3(1) of Regulation No 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, to take into account the places of production of the product concerned both inside and outside the Member State which obtained the registration of the name at issue, the consumption of that product and how it is perceived by consumers inside and outside that Member State, the existence of national legislation specifically relating to that product, and the way in which the name has been used in Community law. The registration of a protected geographical indication (PGI) under that regulation is designed, among other objectives, to prevent the improper use of a name by third parties seeking to profit from the reputation which it has acquired and, moreover, to prevent the disappearance of that reputation as a result of popularisation through general use outside its geographical origin or detached from a specific quality, reputation or other characteristic which is attributable to that origin and justifies registration. Therefore, as regards a PGI, a name becomes generic only if the direct link between, on the one hand, the geographical origin of the product and, on the other hand, a specific quality of that product, its reputation or another characteristic of the product, attributable to that origin, has disappeared, and that the name does no more than describe a style or type of product. (see paras 101, 106-107) 7. Regulation No 1347/2001 supplementing the Annex to Regulation No 1107/96 on the registration of geographical indications and designations of origin under the procedure laid down in Article 17 of Regulation No 2081/92 must be interpreted as having no adverse effects on the validity and the possibility of using, in one of the situations referred to in Article 13 of Regulation No 2081/92 on the protection of geographical indications and designations of origin for agricultural products, pre-existing trade marks of third parties in which the word ‘Bavaria’ appears and which were registered in good faith before the date on which the application for registration of the protected geographical indication (PGI) ‘Bayerisches Bier’ was lodged, provided that those marks are not affected by the grounds for invalidity or revocation as provided for by Article 3(1)(c) and (g) and Article 12(2)(b) of First Directive 89/104 to approximate the laws of the Member States relating to trade marks. Article 14(2) and (3) of Regulation No 2081/92 each have separate objectives and functions and are subject to different conditions. Thus, the fact that Article 1 of Regulation No 1347/2001 registered the name ‘Bayerisches Bier’ as a PGI and that recital 3 in the preamble to that regulation states that that PGI and the trade mark Bavaria are not in the situation referred to in Article 14(3) of Regulation No 2081/92 cannot affect the examination of the conditions which make it possible for the mark and the PGI to co-exist as set out in Article 14(2) of that regulation. In particular, the fact that there is no likelihood of confusion on the part of the consumer, for the purposes of Article 14(3) of Regulation No 2081/92, between the name at issue and the pre-existing mark does not preclude the use of the mark from being covered by a situation referred to in Article 13(1) of that regulation or the possibility that the mark may be subject to one of the grounds for invalidity or revocation as provided for by Article 3(1)(c) and (g) and Article 12(2)(b) respectively of First Directive 89/104. Furthermore, the fact that there is no likelihood of confusion does not mean that it is not necessary to ascertain that the trade mark in question was registered in good faith before the date on which the application for registration of the protected designation of origin or PGI was lodged. The examination of those conditions in Article 14(2) of Regulation No 2081/92 is for the national court alone to carry out, on the basis of the facts and of the relevant national, Community or international law, if necessary making a reference for a preliminary ruling under Article 234 EC. (see paras 121-125, operative part 2)