BAVARIA mark is valid for Dutch beer, says Supreme Court

The Spanish Supreme Court has put an end to the 10-year dispute between Dutch brewery Bavaria NV and Verband Bayerischer Ausfurbrave Reien EV, the union for the protection of Bavarian beer, holding that the BAVARIA mark was valid in Spain (June 3 2009).
In 1999 Bayerischer Ausfurbrave filed suit against Bavaria alleging that the trademark BAVARIA (and design) (International Registration 581.147) was invalid in Spain since it was registered in breach of several provisions of the Spanish Trademarks Act 1988 (absolute and relative grounds for refusal).
In particular, Bayerischer Ausfurbrave alleged that the mark conflicted with the protected geographical indication (PGI) 'Bayerisches beer' and was misleading. Bayerischer Ausfurbrave also relied on its earlier trademark GENUINE BAVARIAN BEER (and design) (International Registration 214.051).
The Madrid Court of First Instance Number 62 upheld Bayerischer Ausfurbrave’s claims and ruled that the BAVARIA mark was invalid. However, the Madrid Court of Appeal reversed the decision of the lower court and dismissed all of Bayerischer Ausfurbrave’s claims.
Bayerischer Ausfurbrave lodged a cassation appeal before the Supreme Court based on the following grounds:
  • breach of the German-Spanish Bilateral Convention of September 11 1970 on the protection of geographical indications, designations of origin and other indications of origin;
  • breach of Council Regulation 1347/2001, supplementing the Annex to Commission Regulation 1107/96 on the registration of geographical indications and designations of origin under the procedure laid down in Article 17 of Council Regulation 2081/92 on geographical indications and designations of origin for agricultural products and foodstuffs; and
  • a likelihood of confusion between the trademark BAVARIA and the earlier mark GENUINE BAVARIAN BEER. 
Under the German-Spanish convention on the protection of geographical indications, the term 'Bayerisches beer' and variations thereof are protected as geographical indications reserved for German goods.
Bayerischer Ausfurbrave contended that the registration in Spain of the trademark BAVARIA contravened the convention since the term 'Bavaria' is a variation of the PGI 'Bayerisches beer'. Therefore, use of that term to identify goods originating from a country other than Germany (ie, the Netherlands) was likely to deceive the public as to the geographical origin of the goods.
The Supreme Court dismissed this claim, reasoning that the relevant Spanish public would perceive the term 'Bavaria' as a fanciful word. In addition, the Supreme Court held that even if the relevant public established a link between the term 'Bavaria' and the German region of 'Baviera' (Spanish for 'Bavaria'), this was insufficient to conclude that consumers would believe that the Bavaria beer originated from that region. Therefore, use of the term 'Bavaria' for Dutch beer was not deceptive. The court thus concluded that registration of the BAVARIA mark did not contravene the convention.
The court then turned to the second ground of appeal. The term 'Bayerisches beer' is protected under Regulation 1347/2001. However, Recitals 2 and 4 of the regulation specify that the term 'Bavaria' may still be used as a trademark provided that such mark is not descriptive or deceptive under the First Trademarks Directive (89/104/EEC).
The Supreme Court  relied on Article 14 of Regulation 2081/92, which provides that use of an infringing trademark within the meaning of Article 13 is permitted provided that the mark:
  • was registered in good faith; and
  • is not descriptive or deceptive.
Having already found that the trademark BAVARIA was not descriptive or deceptive, the court considered that the mark had been registered in good faith. Therefore, there was no breach of Council Regulation 1347/2001.
With regard to the third ground of appeal, the court found that the differences between the marks were sufficient to avoid a risk of confusion among consumers.
The Supreme Court thus dismissed the appeal.

Carlota Viola, Grau & Angulo, Barcelona

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