ECJ rules on the protection of geographical indications

European Union
In Bureau national interprofessionnel du Cognac v Gust Ranin Oy (Joined Cases C-4/10 and C-27/10, July 14 2011), the Court of Justice of the European Union (ECJ) has clarified the protection afforded to geographical indications under Regulation 110/2008 on the definition, description, presentation, labelling and the protection of spirit drinks.

According to the ECJ, the regulation is applicable to trademarks registered prior to its entry into force, as rules for the protection of geographical indications had already been incorporated into EU law before that date. The ECJ also ruled more specifically on the relation between trademarks and geographical indications (Article 23) and on the protection of geographical indications such as ‘Cognac’ (Article 16).
The reference for a preliminary ruling was made by the Supreme Administrative Court of Finland in a case concerning the registration of two figurative trademarks containing the words ‘Cognac’ and its Finnish translation ‘konjakki’ prior to the entry into force of Regulation 110/2008. The Bureau national interprofessionnel du Cognac sought the annulment of a decision by the Board of Appeal of the National Board of Patents and Registrations in which the latter had allowed the registration of the trademarks by Gust Ranin Oy, a Finnish liqueur producer since 1781. The Supreme Administrative Court decided to stay the proceedings and refer four questions concerning the applicability and interpretation of Regulation 110/2008 and the First Trademarks Directive (89/104/EEC) to the ECJ for a preliminary ruling.
The ECJ first held that Regulation 110/2008 applies to trademarks registered before its entry into force without undermining the principles of legal certainty or protection of legitimate expectations. The ECJ noted that the substantive rules of EU law must be interpreted as applying to situations existing before their entry into force only insofar as it clearly follows from their terms, objectives or general scheme that such effect must be given to them. As the regulation does not include any temporal restriction for its applicability as to the date of registration, it was clear that the regulation was intended to apply also to marks registered before its entry into force. Further, the rules laid down in the Agreement on Trade-Related Aspects of Intellectual Property Rights for the protection of geographic indications had been incorporated into EU law as of January 1 1996. In these circumstances, Article 23(1) of the regulation lays down the uniform conditions for the implementation of a rule of EU law and Article 23(2) maintains the temporary derogations which were already recognised under EU law.
Second, the ECJ held that national authorities must refuse or invalidate the registration of a mark which contains a geographical indication, or term corresponding to that indication and its translation, when it does not meet the specifications for that indication, unless the mark is covered by the temporary derogation provided for in Article 23(2). The ECJ held that ‘Cognac’ is clearly a protected geographical indication and that the trademarks applied for did not benefit from the Article 23(2) derogation since they were registered only in January 2003.
According to the ECJ, registration should be refused where the use of the mark applied for would lead to one of the situations referred to in Article 16 of Regulation 110/2008. Points (a) to (d) of Article 16 offer protection to geographical indications against commercial activities where an explicit or implicit reference to a geographic indication is made in a way that is liable to mislead the public as to the origin of the product or, at the very least, to produce in the mind of the public an association of ideas regarding that origin, or to enable the trader to take unfair advantage of the reputation of the geographical indication concerned. The ECJ held that use of a mark which includes a geographical indication such as ‘Cognac’ would be a direct commercial use of a geographical indication within the meaning of point (a) of Article 16. This type of use would also be categorised as ‘evocation’ for the purposes of point (b) of the article, as it would trigger in the consumer’s mind an image of the product whose designation is protected as a geographical indication.
In light of this clarification of Regulation 110/2008, the ECJ deemed there was no need to reply to the questions concerning the interpretation of Directive 89/104.
Tuomas Tiittala and Kristian Sjöblom, under the supervision of Sanna Aspola, Berggren Oy Ab, Helsinki

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