Dutch brewer can continue to use BAVARIA marks, despite 'Bayerisches Bier' PGI

In a decision issued in September 2012, the Italian Supreme Court has held that six BAVARIA figurative marks for Dutch beer can be used in Italy, notwithstanding the registration in 2001 of the protected geographical indication (PGI) 'Bayerisches Bier' by the German association for the protection of Bavarian brewers, Bayerischer Brauerbund (BB). Further, the court held that the BAVARIA marks could not be challenged under Regulation 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, and Regulation 1347/2001 on the registration of geographical indications and designations of origin.

The Supreme Court confirmed a decision of the Court of Torino in which the latter had found that the six BAVARIA marks were valid in Italy. The Supreme Court observed that the trademarks had been registered in good faith before the date of registration of the PGI 'Bayerisches Bier' and that no EU regulation had been breached. It thus rejected BB's request for a declaration of invalidity and nullity. The Court of Appeal of Torino had previously reached the same conclusion in this case, on the same grounds.   

On September 27 2004 BB filed a writ of summons against Dutch brewer Bavaria, requesting that the court prevent the brewer from selling its beer under any trademark containing the word 'Bavaria'. Having obtained a PGI for 'Bayerisches Bier' in 2001, BB asserted that Bavaria’s trademarks imitated, and jeopardised the reputation of, BB’s goods. BB also requested a declaration that Bavaria’s trademarks were invalid and that their use in Italy was unlawful.

The Supreme Court carried out its analysis in light of Regulation 2081/1992, as amended by Regulation 696/2003, and of Regulation 1347/2001, focusing on the circumstances in which a valid PGI can co-exist with an earlier trademark containing a reference to the same geographic area.

In its evaluation, the court highlighted that, under the regulations, a trademark registered in good faith before the corresponding PGI is not unlawful, even if it conflicts with the PGI.

In its defence, Bavaria stated that the word 'Bavaria' is generic, because this term has identified the method and procedure by which the beer is made since the early 1920s. Bavaria pointed out that BAVARIA had become a distinctive sign as early as 1970 in light of its extensive use in commerce, and had been registered as an international trademark since 1971. BB did not dispute this argumentation.

The Supreme Court, in light of the previous decision of the Court of Appeal of Torino and the decision of the Court of Justice of the European Union in Bavaria NV v Bayerischer Brauerbund eV (Case C-343/07), ruled that Bavaria could continue to brew and sell its beer under the name Bavaria.

Italy is not the only country in which the German association has filed cour actions: BB has instigated proceedings in several jurisdictions around the world in order to protect the “common interests of Bavarian brewers”. For example, in 2009 the Federal Court of Australia also ruled in favour of Bavaria NV, allowing the Dutch brewer to register the trademark BAVARIA in Australia.

Margherita Barié and Pietro Pouché, Carnelutti Studio Legale Associato, Milan