1 By order of 2 July 1998, received at the Court on 12 August 1998, the Bundesgerichtshof (Federal Court of Justice) referred to the Court for a preliminary ruling under Article 177 of the EC Treaty (now Article 234 EC) a question on the interpretation of Council Regulation (EEC) No 2081/92 of 14 July 1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (OJ 1992 L 208, p. 1).
2 That question was raised in proceedings between the Schutzverband gegen Unwesen in der Wirtschaft eV, an association founded to combat unfair competition (hereinafter the Schutzverband), and Warsteiner Brauerei Haus Cramer GmbH & Co. KG (hereinafter Warsteiner Brauerei) concerning the use by the latter of the name Warsteiner on labels on bottles for certain types of beer which it brewed at a brewery in Paderborn, 40 km from the town of Warstein. The national legislation
3 In Germany, Paragraph 3 of the Gesetz gegen den unlauteren Wettbewerb (Law against Unfair Competition, hereinafter the UWG) of 7 June 1909 provides: Whoever in commercial transactions for the purposes of competition gives misleading information about ... the origin ... of specific goods ... may be restrained by action from continuing to provide such information.
4 The Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Law on Protection of Trade Marks and Other Signs, hereinafter the Markengesetz) of 25 October 1994 (BGBl. I, 1994, p. 3082), which entered into force on 1 January 1995, provides in Paragraph 1, entitled Protected trade marks and other signs: This Law protects: 1. trade marks, 2. trade names, signs and company names, 3. geographical indications of source.
5 Geographical indications of source are regulated by the sixth part of the Markengesetz. That part is divided into three sections, the first of which (Paragraphs 126 to 129) concerns Protection of geographical indications of source and the second (Paragraphs 130 to 136) Protection of geographical indications and designations of origin within the meaning of Regulation (EEC) No 2081/92.
6 Paragraph 126(1) of the Markengesetz, headed Names, indications or signs protected as geographical indications of source provides as follows: Geographical indications of source within the meaning of this Law mean names of places, areas, regions or countries and other indications or signs used commercially to designate the geographical provenance of goods or services.
7 Paragraph 126(2) provides that The names, indications or signs within the meaning of subparagraph (1) are not eligible for protection as geographical indications of source if they are generic designations.
8 Paragraph 127 of the Markengesetz, headed Scope of protection, provides: 1. Geographical indications of source may not be used commercially for goods or services which do not come from the place, area, region or country which they designate, if with the use of such names, indications or signs for goods or services of other origin there is a risk of misleading as to the geographical provenance. 2. If the goods or services marked with a geographical indication of source have particular characteristics or a particular quality, the geographical indication of source may be used commercially for the corresponding goods or services of that source only if the goods or services have those characteristics or that quality. 3. If a geographical indication of source enjoys a particular reputation, it may not be used commercially for goods or services of other provenance, even if there is no risk of misleading as to the geographical provenance, where use for goods or services of other provenance is liable unfairly to exploit or affect adversely, without justification, the reputation of the indication of geographical source or its distinctive force. ...
9 Paragraph 128(1) of the Markengesetz provides: An action for a prohibitory order may be brought against a person who uses names, indications or signs commercially contrary to Paragraph 127 by those entitled to bring claims under Paragraph 13(2) of the Law on Unfair Competition.
10 According to the order for reference, Paragraph 13(2) of the UWG refers to competitors, trade associations, consumer organisations and chambers of industry and commerce or craft trade associations.
11 Paragraphs 130 to 136 of the Markengesetz set out inter alia the procedure to be followed for the registration of geographical indications and designations of origin within the meaning of Regulation No 2081/92, the arrangements for supervision and monitoring laid down by that regulation, the remedies available and their limitation periods. The Community legislation Regulation No 2081/92
12 Regulation No 2081/92, which entered into force on 25 July 1993, states, in its fifth recital, the labelling of agricultural products and foodstuffs is subject to the general rules laid down in Council Directive 79/112/EEC of 18 December 1978 on the approximation of the laws of the Member States relating to the labelling, presentation and advertising of foodstuffs (OJ 1979 L 33, p. 1 ...); ... in view of their specific nature, additional special provisions should be adopted for agricultural products and foodstuffs from a specified geographical area.
13 Regulation No 2081/92 also states, in its seventh recital, there is diversity in the national practices for implementing registered designations o[f] origin and geographical indications; ... a Community approach should be envisaged; ... a framework of Community rules on protection will permit the development of geographical indications and designations of origin since, by providing a more uniform approach, such a framework will ensure fair competition between the producers of products bearing such indications and enhance the credibility of the products in the consumers' eyes.
14 The ninth and tenth recitals of Regulation No 2081/92 are worded as follows: Whereas the scope of this Regulation is limited to certain agricultural products and foodstuffs for which a link between product or foodstuff characteristics and geographical origin exists; whereas, however, this scope could be enlarged to encompass other products or foodstuffs; Whereas existing practices make it appropriate to define two different types of geographical description, namely protected geographical indications and protected designations of origin.
15 Article 1 of Regulation No 2081/92 provides: 1. This Regulation lays down rules on the protection of designations of origin and geographical indications of agricultural products intended for human consumption referred to in Annex II to the Treaty and of the foodstuffs referred to in Annex I to this Regulation and agricultural products listed in Annex II to this Regulation. ... 2. This Regulation shall apply without prejudice to other specific Community provisions. ...
16 Annex I to the Regulation, headed Foodstuffs referred to in Article 1, mentions Beer in its first indent.
17 Article 2(1) and (2) of Regulation No 2081/92 provides: 1. Community protection of designations of origin and of geographical indications of agricultural products and foodstuffs shall be obtained in accordance with this Regulation. 2. For the purposes of this Regulation: (a) designation of origin: means the name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff: - originating in that region, specific place or country, and - the quality or characteristics of which are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, and the production, processing and preparation of which take place in the defined geographical area; (b) geographical indication: means the name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff: - originating in that region, specific place or country, and - which possesses a specific quality, reputation or other characteristics attributable to that geographical origin and the production and/or processing and/or preparation of which take place in the defined geographical area.
18 Regulation No 2081/92 states, in its 12th recital, that to enjoy protection in every Member State geographical indications and designations of origin must be registered at Community level and that entry in a register should also provide information to those involved in trade and to consumers.
19 Articles 5 to 7 of Regulation No 2081/92 lay down the procedure for the registration of geographical indications and designations of origin mentioned in Article 2, which is known as the normal procedure. According to Article 5(4), the application is to be sent to the Member State in which the geographical area is located. Under Article 5(5), the Member State is to check that the application is justified and forward it to the Commission.
20 Since examination of an application for registration by the Commission takes a certain amount of time and, pending a decision on the registration of a name, a Member State must be allowed to confer transitional national protection, Regulation No 2081/92 was amended by Council Regulation (EC) No 535/97 of 17 March 1997 (OJ 1997 L 83, p. 3), which inserted the following text in Article 5(5) after the first subparagraph: That Member State may, on a transitional basis only, grant on the national level a protection in the sense of the present Regulation to the name forwarded in the manner prescribed, and, where appropriate, an adjustment period, as from the date of such forwarding; ... Such transitional national protection shall cease on the date on which a decision on registration under this Regulation is taken. ... The consequences of such national protection, where a name is not registered under this Regulation, shall be the sole responsibility of the Member State concerned. The measures taken by Member States under the second subparagraph shall produce effects at national level only; they shall have no effect on intra-Community trade.
21 Article 17 of Regulation No 2081/92 sets up a simplified registration procedure applicable to the registration of names already in existence on the date of entry into force of the Regulation. It provides: 1. Within six months of the entry into force of the Regulation, Member States shall inform 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 pursuant to this Regulation. 2. In accordance with the procedure laid down in Article 15, the Commission shall register the names referred to in paragraph 1 which comply with Articles 2 and 4. Article 7 shall not apply. However, generic names shall not be added. 3. Member States may maintain national protection of the names communicated in accordance with paragraph 1 until such time as a decision on registration has been taken.
22 Under Article 8 of Regulation No 2081/92, the indications PDO, PGI or equivalent traditional national indications may appear only on agricultural products and foodstuffs that comply with this Regulation.
23 Under Article 13 of Regulation No 2081/92: 1. Registered names shall be protected against: (a) any direct or indirect commercial use of a name registered in respect of products not covered by the registration in so far as those products are comparable to the products registered under that name or insofar as using the name exploits the reputation of the protected name; (b) any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or accompanied by an expression such as "style", "type", "method", "as produced in", "imitation" or similar; (c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin; (d) any other practice liable to mislead the public as to the true origin of the product. Where a registered name contains within it the name of an agricultural product or foodstuff which is considered generic, the use of that generic name on the appropriate agricultural product or foodstuff shall not be considered to be contrary to (a) or (b) in the first subparagraph. 2. However, Member States may maintain national measures authorising the use of the expressions referred to in paragraph 1(b) for a period of not more than five years after the date of publication of this Regulation, provided that: - the products have been marketed legally using such expressions for at least five years before the date of publication of this Regulation, - the labelling clearly indicates the true origin of the product. However, this exception may not lead to the marketing of products freely on the territory of a Member State where such expressions are prohibited. 3. Protected names may not become generic.
24 In order to allow for the fact that the first proposal for registration of geographical indications and designations of origin which the Commission was to draw up pursuant to Article 17(2) of Regulation No 2081/92 was not submitted to the Council until March 1996, when the major part of the transitional period of five years provided for by Article 13(2) of that Regulation had elapsed, Regulation No 535/97, which entered into force on 28 March 1997, replaced the latter paragraph with the following: By way of derogation from paragraph 1(a) and (b), Member States may maintain national systems that permit the use of names registered under Article 17 for a period of not more than five years after the date of publication of registration, provided that: - the products have been marketed legally using such names for at least five years before the date of publication of this Regulation, - the undertakings have legally marketed the products concerned using those names continuously during the period referred to in the first indent, - the labelling clearly indicates the true origin of the product. However, this derogation may not lead to the marketing of products freely within the territory of a Member State where such names were prohibited. The main proceedings and the question referred for a ruling
25 Warsteiner Brauerei has run a brewery in Warstein in Nordrhein-Westfalen, Germany, since 1753. It is the owner of the trade mark Warsteiner for beer of Pilsener style, registered on 24 October 1990 at the Deutsche Patentamt (German Patents Office), on the basis of public acceptance. It is common ground that beer brewed in Warstein has no special characteristics attributable to that locality and that the beer called Warsteiner owes its reputation to the quality of the beer and promotion of the Warsteiner brand.
26 In autumn 1990, Warsteiner Brauerei acquired a brewery located in Paderborn, 40 km from Warstein, where it brewed Light and Fresh type beers until the end of 1991. The labels on the front of the bottles for these beers bore inter alia the name Warsteiner or Marke Warsteiner (Warsteiner Brand). The back labels indicated inter alia that the beers were brewed and bottled in unserer neuen Paderborner Brauerei (in our new Paderborn Brewery).
27 As it considered that those labels were misleading, the Schutzverband brought an action against Warsteiner Brauerei before the Landgericht (Regional Court), Mannheim, seeking an injunction, pursuant to Paragraph 3 of the UWG, restraining it from using Warsteiner as a geographical indication of source for beer brewed in Paderborn.
28 Before the Landgericht, Mannheim, Warsteiner Brauerei argued, inter alia, that the name Warsteiner was not a reference to geographical provenance, inasmuch as the locality of Warstein was largely unknown to the general public, and, in any event, the reputation of its beer did not depend on particular characteristics attributable to that locality. It also pointed out that there were other beers bearing names referring to a geographical source which did not come exclusively from the place thereby designated.
29 After ordering a consumer survey, the Landgericht, Mannheim, granted the injunction sought by the Schutzverband and, by order of 10 June 1994, prohibited the defendant from offering for sale, distributing and/or putting into circulation with the offending labels the beers brewed in the Paderborn brewery.
30 On appeal, the Oberlandesgericht (Higher Regional Court), Karlsruhe, by order of 14 February 1996, quashed the judgment of the Landgericht and dismissed the action of the Schutzverband. After obtaining a supplementary expert opinion, the Oberlandesgericht, Karlsruhe, held that the survey showed that the name at issue did not significantly mislead, that is to say mislead in a manner likely to influence consumer behaviour, a substantial proportion of those surveyed. It found that among the consumers surveyed who drank beer, even if only occasionally or rarely, only 8% knew of a locality called Warstein and accorded that place importance.
31 In its judgment, the Oberlandesgericht, Karlsruhe, also considered the claims based on the Markengesetz, which was by then in force, and, according to the written observations put before the Court by Warsteiner Brauerei, stated in that regard: Nor can the claim made be based on Paragraph 128(1) of the Markengesetz, in conjunction with Paragraphs 126 and 127 of that Law. The protection, in trade-mark law, of geographical indications of source, requires that there be a risk of misleading (Paragraph 127(1) of the Markengesetz). Just as in the case of Paragraph 3 of the UWG, the basis for a claim must be the existence of a false impression which influenced the decision to purchase.
32 The dispute finally came before the Bundesgerichtshof which, in its order for reference, observes, first, that it is the provisions of the Markengesetz which are of relevance for the legal assessment of the dispute in the main proceedings. It points out that the protection of geographical indications of source was widened by the adoption of that new legislation which operates as a lex specialis. By its nature, that protection continues to be a matter of competition law, but provisions such as Paragraph 3 of the UWG can now be invoked only for situations which do not fall under Paragraph 126 et seq. of the Markengesetz. In the absence, however, of an allocation of the name to a specified (exclusive) holder, geographical indications of source do not constitute a distinct form of intellectual property.
33 The Bundesgerichtshof then observes that the prohibition on labelling a product with inaccurate information as to its geographical source is justified in order to protect competitors, so that geographical indications of source should also be protected where the source of a product has no influence on the consumer's purchasing decision.
34 According to the Bundesgerichtshof, the protection of simple geographical indications of source provided for in Paragraph 127(1) of the Markengesetz is not subject to the condition that such indications should be familiar to the public as such, that is to say, in the case in the main proceedings, as a reference to a place called Warstein, but simply requires that the locality indicated should not be wholly inconceivable as the place of production because of its specific character or the particular nature of the product. Nor is that protection subject to the condition that the consumer should associate particular qualities with that indication, attributable to regional or local characteristics. In order to rule on the dispute in the main proceedings, it is not, therefore, relevant to know whether the consumer associates particular expectations of quality with the place of provenance of the beer or whether the designation Warsteiner, as an indication of source, has any importance in the consumer's decision to purchase.
35 Finally, the Bundesgerichtshof considers that Regulation No 2081/92, Article 2(2)(b) of which protects geographical indications of foodstuffs only if a specific quality, reputation or other characteristics are attributable to that geographical origin, should not preclude national protection of simple geographical indications of source. However, it takes the view that neither the Court, in its judgment in Joined Cases C-321/94 to C-324/94 Pistre and Others [1997] ECR I-2343, nor the Commission, in the written observations it lodged in this case, gave a clear and definitive answer to the question whether the protection of geographical indications and designations of origin introduced by Regulation No 2081/92 precludes any more extensive national protection.
36 Since it considered that the case turned on the interpretation of Regulation No 2081/92, the Bundesgerichtshof decided to stay proceedings and refer the following question to the Court of Justice for a preliminary ruling: Does Regulation No 2081/92 of 14 July 1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs preclude application of a national provision which prohibits the misleading use of a simple geographical designation of source, that is, an indication in the case of which there is no link between the characteristics of the product and its geographical provenance? The question referred for a preliminary ruling
37 It should be borne in mind, first of all, that the fifth recital of Regulation No 2081/92 states that the labelling of agricultural products and foodstuffs remains subject to the general rules laid down in Directive 79/112.
38 It must also be observed that, in its written observations, the German Government expressly points out that, like inter alia Paragraph 3 of the UWG, Paragraph 126 et seq of the Markengesetz seek to provide consumers with the same protection against misleading labelling as Directive 79/112.
39 However, the national court has not asked the Court to interpret that directive: the question it has referred for a preliminary ruling concerns the provisions of Regulation No 2081/92 only.
40 Read in the light of the applicable national legislation the question referred must therefore be understood as seeking to ascertain whether Regulation No 2081/92 precludes the application of national legislation which prohibits the potentially misleading use of a geographical indication of source where there is no link between a product's characteristics and its geographical provenance.
41 In that regard, it must be observed that it is clear from the case-law of the Court that, in the absence of common rules relating to the production and marketing of a product, it is in principle for the Member States to regulate all matters relating to the marketing of that product on their own territory, including its description and labelling, subject to any Community measure adopted with a view to approximating national laws in these fields (Case 27/80 Fietje [1980] ECR 3839, paragraph 7).
42 Next, it must be observed that, pursuant to Articles 1(1) and 2(1) and (2), Regulation No 2081/92 regulates the Community protection of designations of origin and geographical indications within the meaning of that regulation.
43 According to Article 2(2)(b), Regulation No 2081/92 only concerns geographical indications in respect of which there is a direct link between both a specific quality, reputation or other characteristic of the product and its specific geographical origin (see, to that effect Pistre, cited above, paragraph 35).
44 It is common ground that simple geographical indications of source, in the case of which, in the terms used by the national court in its question, there is no link between the characteristics of the product and its geographical provenance, do not fall within that definition and are not therefore protected under Regulation No 2081/92.
45 However, there is nothing in Regulation No 2081/92 to indicate that such geographical indications of source cannot be protected under the national legislation of a Member State.
46 On the contrary, it is expressly stated in the ninth recital of Regulation No 2081/92 that its scope is limited to designations in the case of which a link between product or foodstuff characteristics and geographical origin exists.
47 Moreover, in its judgment in Pistre, cited above, paragraphs 39 and 40, the Court has held that Regulation No 2081/92 does not preclude application of domestic rules protecting designations containing specific geographical references, which, if there were links between the characteristics of the products which those designations evoke and the geographical area to which they refer, could be registered under that regulation.
48 Warsteiner Brauerei and the Greek Government object that by authorising the maintenance, alongside Regulation No 2081/92, of national rules on the protection of geographical indications which do not coincide with the conditions for protection laid down by the Regulation would run counter to the very purpose of that regulation, which, according to its seventh recital, is to set up a Community system for the protection of geographical indications and designations of origin by replacing diverse national practices in that area with a framework of Community rules and a more uniform approach. According to the Greek Government, the maintenance of such national rules also fundamentally undermines the Community registration system set up by Regulation No 2081/92, in that it would allow the protection of geographical indications without respect for the procedural rules and the strict basic conditions to which their registration is subject, and thus without respect for their protection under Regulation No 2081/92.
49 In that regard, it must be observed, first, that the purpose of Regulation No 2081/92 cannot be undermined by the application, alongside that regulation, of national rules for the protection of geographical indications of source which do not fall within its scope.
50 Second, Regulation No 2081/92 is intended to ensure uniform protection within the Community of the geographical designations which it covers and it introduced a requirement of Community registration so that they could enjoy protection in every Member State (see, to that effect, the judgment in Joined Cases C-129/97 and C-130/97 Chiciak and Fol [1998] ECR I-3315, paragraphs 25 and 26), whereas the national protection which a Member State confers on geographical designations which do not meet the conditions for registration under Regulation No 2081/92 is governed by the national law of that Member State and is confined to the territory of that Member State.
51 Warsteiner Brauerei and the Greek Government also point out that Article 17(3) of Regulation No 2081/92 and Article 5(5) thereof, as amended by Regulation No 535/97, authorise Member States to maintain or grant national protection for names communicated or forwarded to the Commission for registration under either the simplified procedure or the normal procedure only for a transitional period, until the date on which a decision on their registration is taken. They infer from this that neither names communicated or forwarded pursuant to Article 17(1) and Article 5(5) respectively of Regulation No 2081/92 which do not meet the conditions for protection under that regulation, nor a fortiori those not so communicated or forwarded can no longer be protected.
52 In that regard, it is sufficient to note, first, that Article 17(3) of Regulation No 2081/92 applies only to names, already in existence on the date of entry into force of that regulation, which were communicated by Member States to the Commission for registration and protection at Community level. That provision is thus intended to ensure that, owing to the initiation of the registration procedure and pending a decision closing that procedure, such names do not lose the national protection they enjoyed and is in no way intended to regulate the status of those existing names whose registration is not sought by any Member State.
53 Second, the second subparagraph of Article 5(5) of Regulation No 2081/92, as inserted by Regulation No 535/97, makes clear that the transitional protection which Member States may grant under that provision to a name whose registration has been applied for under the normal procedure is protection in the sense of the present Regulation, which, however, remains confined to the national territory, as is clear from the fifth subparagraph of Article 5(5) of Regulation No 2081/92, as inserted by Regulation No 535/97. That provision thus has no bearing on the question whether Member States may, on their respective national territories, grant protection under their national law to geographical designations for which they do not apply for registration under Regulation No 2081/92 or which do not meet the conditions for receiving the protection provided for by that regulation.
54 In view of the foregoing considerations, the answer to be given to the question referred to the Court must be that Regulation No 2081/92 does not preclude the application of national legislation which prohibits the potentially misleading use of a geographical indication of source in the case of which there is no link between the characteristics of the product and its geographical provenance.