Bavaria battle shifts in favour of the Dutch

European Union
Advocate General Mazak has issued his opinion in Bayerischer Brauerbund eV v Bavaria NV (Case C-120/08, September 16 2010), a reference for a preliminary ruling from the German Bundesgerichtshof.
 
Bayerischer Brauerbund eV is a German association formed to protect the common interests of Bavarian brewers. It owns the following collective trademarks:     
  • GENUINE BAVARIAN BEER (since 1958);
  • BAYRISCH BIER and BAYERISCHES BIER (since 1968); and
  • REINHEITSGEBOT SEIT 1516 BAYRISCHES BIER (since 1985).
Bavaria NV is a Dutch commercial brewer which trades internationally. Formerly called Firma Gebroeders Swinkels, the company began to use the word ‘Bavaria’ in 1925; this became part of its name in 1930. Bavaria owns several trademarks and figurative elements containing the word ‘Bavaria’. The registration dates include 1947, 1971, 1982, 1991, 1992 and 1995. Protection of some of those trademarks was refused in Germany in 1973, 1992 and 1993.
 
The name ‘Bayerisches Bier’ (in English, 'Bavarian beer') is covered by bilateral agreements on the protection of geographical indications, appellations of origin and other geographic names between Germany and France, Greece, Italy, Switzerland and Sweden.
 
In September 1993 Bayerischer Brauerbund, in agreement with the associations Münchener Brauereien eV and Verband Bayerischer Ausfuhrbrauereien eV, applied to register ‘Bayerisches Bier’ as a protected geographical indication (PGI) in accordance with the simplified procedure under Article 17 of Council Regulation 2081/92 on geographical indications and designations of origin for agricultural products and foodstuffs. This application was accepted in January 1994 and, after some fine-tuning, the final version of the specification was sent to the European Commission on March 28 2000.
 
Two draft regulations for registration of ‘Bayerisches Bier’ as a PGI were discussed on a number of occasions in the Regulatory Committee for geographical indications and appellations of origin, but the committee was unable to deliver an opinion within the prescribed period, since it lacked the requisite majority. The commission thus converted its draft into a proposal for a regulation of the Council, which then adopted Regulation 1347/2001, registering ‘Bayerisches Bier’ as a PGI.
 
Relying on Article 14(1) of Regulation 510/2006 (the current EU legislation on the protection of geographical indications, repealing and replacing Regulation 2081/92), which states that registration of a trademark shall be refused if the application is submitted after the date of submission of the registration application of the PGI to the Commission (rather than its date of publication, under Article 14 of the previous regulation, Regulation 2081/92), Bayerischer Brauerbund then brought actions in Germany and other countries, seeking an order requiring Bavaria to consent to the removal of an international trademark containing the word 'Bavaria' which had a priority date of 1995 - after the application was made, but before it was published and crystallised into a PGI. The Landgericht München upheld this action and an appeal was dismissed by the Oberlandesgericht München. A further appeal was made to the Bundesgerichtshof, which decided to stay the proceedings and refer the following questions to the ECJ for a preliminary ruling:
 
"(1) Does Article 14(1) of Regulation... 510/2006 apply in the case where the protected indication has been validly registered in accordance with the simplified procedure under Article 17 of Regulation... 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs?
 
(2) (a) If the answer to Question 1 is in the affirmative, what date should be taken as the basis for determining the classification in time of the protected geographical indication for the purposes of Article 14(1) of Regulation... 510/2006?
 
(b) If the answer to Question 1 is in the negative, what provision governs the conflict between a geographical indication validly registered in accordance with the simplified procedure under Article 17 of Regulation... 2081/92 and a trademark, and what determines the classification in time of the protected geographical indication?
 
(3) May the national provisions on the protection of geographical designations be applied in the event that the indication 'Bayerisches Bier' fulfils the conditions for registration under Regulation... 2081/92 and Regulation... 510/2006, but Regulation... 1347/2001 is invalid?"
 
The advocate general stated that Article 14(1) of Regulation 510/2006 is not applicable where a protected indication of origin has been validly registered in accordance with the simplified procedure provided for in Article 17 of Regulation 2081/92.
 
The advocate general further held that:
 
"Regulation 2081/92 is to be interpreted as meaning that the date of the publication of the registration is the material date for the classification in time, for the purposes of Article 14(1) of that regulation, of a protected geographical indication which has been registered in accordance with the simplified procedure under Article 17 of that regulation."
 
This looks like good news for the Dutch defendants - if, as seems likely, the ECJ accepts the advocate general's analysis.
 
The parties were involved in earlier proceedings before the ECJ in a reference for a preliminary ruling from the Turin Court of Appeal (for further details please see "Dutch brewer can keep BAVARIA mark in Italy, says ECJ").
 
Jeremy Phillips, IP consultant to Olswang LLP, London

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