Dutch brewer can keep BAVARIA mark in Italy, says ECJ

European Union
The European Court of Justice (ECJ) has issued its decision in Bavaria NV v Bayerischer Brauerbund eV (Case C-343/07, July 2 2009), a reference for a preliminary ruling from the Turin Court of Appeal (Italy).

Bayerischer Brauerbund eV (BB), a German association, has, since 1917, had the objective of protecting the common interests of Bavarian brewers. It has owned the collective trademarks BAYRISCH BIER and BAYERISCHES BIER since 1968. Bavaria NV, a Dutch commercial brewer, began to use the word ‘Bavaria’ in 1925. Bavaria owns several word and figurative trademarks containing the word ‘Bavaria’. The company's Italian subsidiary is Bavaria Italia. The term ‘Bayerisches Bier’ is covered by bilateral agreements on the protection of geographical indications, appellations of origin and other geographic names between Germany and France, Italy, Greece, Switzerland and Spain.

In 1993 BB submitted to the German government an application for the registration of ‘Bayerisches Bier’ as a protected geographical indication (PGI) under the simplified procedure set forth in Council Regulation 2081/92 on geographical indications and designations of origin for agricultural products and foodstuffs. The German government informed the European Commission, which regarded the application as well-founded and submitted a draft regulation seeking the registration of ‘Bayerisches Bier’ as a PGI. After some disagreement, the Council of the European Union adopted Regulation 1347/2001, which registered ‘Bayerisches Bier’ as a PGI. Neither Bavaria nor Bavaria Italia brought any action against Regulation 1347/2001.

Subsequently, following similar proceedings in other member states, BB tried to stop Bavaria and Bavaria Italia from using their Italian trademark BAVARIA. It sought an interlocutory ruling declaring that the mark was invalid or revoking it on the grounds that:
  • it conflicted with the PGI ‘Bayerisches Bier’; or
  • in any event, it contained a geographical indication which was generic and misleading, as the beer was Dutch.
The Tribunale di Torino allowed the application in part. Bavaria and Bavaria Italia appealed to the Turin Appeal Court, which stayed the proceedings and referred two questions to the ECJ for a preliminary ruling. The first question concerned the validity of Regulation 1347/2001. The second question was as follows:
"[...] If Question [1] is held inadmissible or unfounded, should […] Regulation 1347/2001 […] be construed as meaning that recognition of the [PGI] 'Bayerisches Bier' is to have no adverse effects on the validity or usability of pre-existing marks of third parties in which the word 'Bavaria' appears."
The ECJ held that consideration of the first question had not disclosed any factor liable to affect the validity of Regulation 1347/2001.

Moreover, the ECJ stated that Regulation 1347/2001 must be interpreted as having no adverse effects on the validity of and the possibility of using, in one of the situations referred to in Article 13 of Regulation 2081/92, pre-existing trademarks containing the word ‘Bavaria’ which were registered in good faith before the date on which the application for registration of the PGI ‘Bayerisches Bier’ was made, provided that those marks are not affected by the grounds for invalidity or revocation set forth in Articles 3(1)(c) and (g) and Article 12(2)(b) of the First Trademarks Directive (89/104/EEC).
Arguably, the fate of the first question is not surprising in light of the ECJ's position in Germany v Commission (Case C-465/02), which involved the failed challenge to the law that clawed the generic term 'feta' back into Greek hands. Moreover, the investment of many decades in the BAVARIA mark will not be wasted if BB cannot show bad faith in registration.
Jeremy Phillips, IP consultant to Olswang, London

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