GIs protected against infringement claims, rules advocate general

In Gerolsteiner Brunnen GmbH & Co v Putsch GmbH, Advocate General Christine Stix-Hackl has found that geographical indications (GIs) that are similar to trademarks may be protected against infringement claims - even when they are used as trademarks - provided that their use can be considered honest practice.

Gerolsteiner Brunnen sells mineral water and lemonade under the trademark GERRI. Putsch distributes in Germany beverages produced by Irish food and beverages manufacturer Kerry Group under the mark KERRY SPRING. Gerolsteiner claimed that KERRY SPRING, used as a picture mark in combination with a landscape image, infringed its word mark GERRI because of their phonetic similarity.

While Putsch succeeded in its appeal before the Regional High Court of Munich arguing that Kerry (i) is the name of an Irish county, and (ii) is used as a GI, the Federal Supreme Court referred the case to the European Court of Justice (ECJ) seeking clarification on two issues. Under Article 6(1)(b) of the Community Trademark Directive a trademark owner cannot ban the use of a GI that is similar to its trademark provided that the GI is used in accordance with honest practices in industrial or commercial matters. The Federal Supreme Court asked the ECJ whether (i) Article 6(1)(b) is applicable when a GI is used as a trademark, and (ii) the fact that the GI is used as a trademark needs to be taken into account when judging if its use amounts to honest practice.

Stix-Hackl answered both questions in the affirmative. She found that the following three factors are crucial when determining whether the use of a GI as a trademark is honest practice:

• the degree of similarity between the GI and the trademark;
  
  
• the degree of prominence of the GI within the mark; and
  
  
• whether the public perceives the GI as a trademark.

Should the German Supreme Court follow Stix-Hackl's opinion, it would put an end to a highly contentious debate over the equivalent in German law of Article 6(1)(b). Thus far, the German practice has been to consider GIs used as trademarks as either (i) outside the protection of Section 23(2) of the German Trademark Act, or (ii) dishonest practice. Stix-Hackl's opinion makes room for a more balanced approach.

For a discussion of another case involving the KERRY SPRING and GERRI marks, see KERRY SPRING registration steams through.

Julia Meuser, Freshfields Bruckhaus Deringer, Hamburg