Keywords

Summary



Keywords

1. Approximation of laws – Uniform legislation – Definition, description, presentation, labelling and protection of geographical indications of spirit drinks – Regulation No 110/2008 – Temporal application

(European Parliament and Council Regulation No 110/2008, Arts 16 and 23(1) and (2))

2. Approximation of laws – Uniform legislation – Definition, description, presentation, labelling and protection of geographical indications of spirit drinks – Regulation No 110/2008 – Relationship between trade marks and geographical indications

(European Parliament and Council Regulation No 110/2008, Arts 16 and 23(1) and (2))

3. Approximation of laws – Uniform legislation – Definition, description, presentation, labelling and protection of geographical indications of spirit drinks – Regulation No 110/2008 – Protection of geographical indications

(European Parliament and Council Regulation No 110/2008, Art. 16(a) and (b))

Summary

1. Regulation No 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Regulation No 1576/89 is applicable to the assessment of the validity of the registration of a trade mark containing a geographical indication protected by that regulation, when the registration took place before the regulation entered into force.

Under Article 23(1) of Regulation No 110/2008, registration of a trade mark which contains a geographical indication registered in Annex III is to be refused or invalidated if its use would lead to any of the situations referred to in Article 16 of that regulation. Thus, in addition to the option of refusing the registration of such a mark, that provision clearly makes it possible to invalidate, on the same grounds, a mark which has already been registered, and makes no reference to a time-frame imposing any sort of temporal restriction as regards the date of registration. It is clear from the wording that Article 23(1) of Regulation No 110/2008 is intended to apply to marks registered before that regulation entered into force.

That interpretation is supported by the rule laid down in Article 23(2) of Regulation No 110/2008, which authorises, by way of derogation, the continued use of a mark when such use corresponds to one of the situations referred to in Article 16 of that regulation, so long as that mark was registered or acquired before the date of entry into force of the protection of the geographical indication concerned in the country of origin or before 1 January 1996. Therefore, apart from marks falling within the temporal limits of the derogation expressly provided for in Article 23(2) of Regulation No 110/2008, marks registered before the entry into force of that regulation may be invalidated in accordance with Article 23(1).

(see paras 27-31, 37, operative part 1)

2. The competent national authorities must, on the basis of Article 23(1) of Regulation No 110/2008 on the definition, description, presentation, labelling and protection of geographical indications of spirit drinks, refuse or invalidate the registration of a mark which contains a protected geographical indication and is not covered by the temporary derogation provided for in Article 23(2) of that regulation, when the use of that mark would lead to one of the situations referred to in Article 16 thereof.

(see para. 45, operative part 2)

3. A situation such as the registration of a mark containing a geographical indication, or a term corresponding to that indication and its translation, in respect of spirit drinks which do not meet the specifications set for that indication falls within the situations referred to in Article 16(a) and (b) of Regulation No 110/2008, on the definition, description, presentation, labelling and protection of geographical indications of spirit drinks without prejudice to the possible application of other rules laid down in Article 16.

As regards the situations referred to in Article 16 of that Regulation, it should be observed that point (a) of that provision refers, inter alia, to the direct or indirect commercial use of a geographical indication for products not covered by the registration, in so far as those products are comparable to the registered spirit drink.

In the situation referred to in Question 2, in which the products not covered by a geographical indication are spirit drinks, it seems reasonable to hold that that situation may concern products comparable to the spirit drink registered under that geographical indication. Regardless of their various categories, ‘spirit drinks’ covers drinks which have common objective characteristics and which are consumed, from the point of view of the relevant public, on occasions which are broadly identical. Furthermore, they are frequently distributed through the same channels and subject to similar marketing rules.

As regards the concept of ‘evocation’, as referred to in Article 16(b) of Regulation No 110/2008, this covers a situation in which the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected. More specifically, the Court has held that that could be the position in the case of products with visual similarities and sales names which are phonetically and visually alike.

It seems reasonable to transpose those findings to the situation concerning the registration of a mark containing a geographical indication, or a term corresponding to that indication and its translation, with respect to spirit drinks which do not meet the specifications required by that indication.

(see paras 53-58, 61, operative part 2)