ECJ ruling considered in cheese designation dispute
On February 16 2007 the Maritime and Commercial Court ruled in Hofmeister Vermögensverwaltungs GmbH & Co KG v Consorzio per la Tutela Formaggio Gorgonzola. The question for the court to decide was whether Hofmeister Vermögensverwaltungs GmbH & Co KG, which had been using the designation Cambozola for its cheese for many years, had used its mark in contravention of Consorzio per la Tutela Formaggio Gorgonzola's geographical designation Gorgonzola.
The court held that there was no risk that the average consumer would confuse the product designations Cambozola and Gorgonzola and no reason to believe that consumers would presume that there was a connection between the two product designations. Further, the court did not find that the marketing of a cheese under the designation Cambozola was contrary to good marketing practice in relation to Gorgonzola. It held that a comparison under the Trademarks Act would lead to the same result; the marks consist of four syllables, of which the last two are identical, whereas the first two are almost completely different (all the consonants are different, while there are only small similarities between the vowels).
In regard to Council Regulation 2081/92 on the protection of geographical indications (GIs) and designations of origin for agricultural products and foodstuffs, the court held that the designation Gorgonzola is protected under Article 13(1)(b). The court referred to a decision issued by the European Court of Justice in a case between the same two parties.
The Danish court found that the designation Cambozola may point towards Gorgonzola and also towards Camembert cheese. However, the court held that it had to make a complete judgment in relation to the market; in this respect, the court found that there was no risk of confusion under marketing or trademark rules and that it had to be borne in mind that Cambozola had been marketed in Denmark for more than 20 years. Therefore, the court found that no violation was implied by the last two syllables of the designation Cambozola.
The court held that Article 14(2) of the regulation applies to trademarks resulting from use. The court also referred to Article 24(5) of the Agreement on Trade-Related Aspects of Intellectual Property Rights, which references trademarks acquired through use and GIs.
The court found that, at the time use of the Cambozola designation was initiated, the Gorgonzola designation had obtained protection under the Stresa Convention 1951. However, it held that the protection held by the Gorgonzola designation was narrower than the protection accorded by Article 13(1) of the regulation and the Stresa Convention did not prevent good-faith use by the owner of the Cambozola designation.
Therefore, the court ordered the Consorzio per la Tutela Formaggio Gorgonzola to recognize that the owner of the designation Cambozola was entitled to market cheese in Denmark under the trademark CAMBOZOLA. It also ruled that the use in Denmark of International Trademark Registration 678,600 - CAMBOZOLA was valid. The association was ordered to pay costs.
Mads Marstrand-Jorgensen, Norsker & Co, Copenhagen
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