Ángel Martínez Gutiérrez Catedrático de Derecho Mercantil Universidad de Jaén

Transcription

1 Trademarks and Geographical Indications IP ERASMUS GLOBAL FOOD LAW AND QUALITY Viterbo (Italia), 6 de febrero de 2014 Ángel Martínez Gutiérrez Catedrático de Derecho Mercantil Universidad de Jaén

2 INDEX I. PREMISE. II. TYPOLOGY OF COMMERCIAL USES OF GEOGRAPHICAL INDICATION ON THE LABEL. III. CASES OF CONFLICT. IV. COMMUNITY PROTECTION OF PDO/PGI FACED WITH THE TRADES MARKS.

3 I. PREMISE Market concert over the geographical location of the products (especially food products, but not only) or services. Undifferentiated character of the products in the market as a consequence of the technology used in the production process. Differentiation of the offer through geographical distinctive signs or presentation of it within a suggestive environment (image of quality!). Deduction of a relevant information from the public... But, what is it?... Let's see.

4 Possible relationships between the products offered and the geographical territory indicated on the label * The place indicated on the label can make a clear reference to the place of cultivation, processing or manufacture of the product, what can directly affect the specific characteristics of the products distinguished by the specific indication, as a result of its climate and human components.

5 * It may happen that this reference does not really exist (eg. a fantasy indication), but the place designated may develop a double function: a) may allow the consumers suggestion with regard to characteristics presented by the product or service (eg. Alaska to distinguish a refrigerator). b) can lead to positive feelings in the consumer as a result of the beauty of the place, the history, traditions, etc..; generating the choice of the public (eg. two towers to distinguish sheets).

6 II. TYPOLOGY OF COMMERCIAL USES OF GEOGRAPHICAL INDICATION ON THE LABEL

7 III. CASES OF CONFLICT These different ownership titles generate tensions in the market: A) Collective nature of the indication (indication of provenance, PDO/PGI) vs. individual title of exclusive property (trademarks or firm names). B) Individual explotation of the collective reputation. C) Possibility of a risk of misleading the market and conditioning of consumer behavior. It is for this reason that the Community legislator (also the National ones!) introduced several limitations to individual appropriation of collective titles. Let's see, in concrete terms, the protection of qualified geographical designations.

8 IV. COMMUNITY PROTECTION OF PDO/PGI FACED WITH THE TRADES MARKS There are two bodies of legislation: one rules trades marks, and the other regulates the geographical names. This last one is also divided into two groups: one for grapevine products, the other for other agricultural products and foodstuffs (eg. OLIVE OILS). A) TRADE MARKS: A) Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark B) GEOGRAPHICAL NAMES: A) FOR GRAPEVINE PRODUCTS: Council Regulation (EC) n 1234/2007 of October 22nd 2007 establishing a common organization of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation). B) FOR OTHER AGRICULTURAL PRODUCTS AND FOODSTUFFS (NON GRAPEVINE PRODUCTS): Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs. Regulation (EC) n 1234/2007 and Regulation (EU) No 1151/2012 provide a similar protection for WINES and OLIVE OILS.

9 A) Council Regulation (EC) No 207/2009 on the Community trade mark Article 7.1. c) The following shall not be registered: trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service. Article 7.1. j) trade marks for wines which contain or consist of a geographical indication identifying wines or for spirits which contain or consist of a geographical indication identifying spirits with respect to such wines or spirits not having that origin Article 7.1. k) trade marks which contain or consist of a designation of origin or a geographical indication registered in accordance with Council Regulation (EC) No 510/2006 of 20 March 2006 (1) on the protection of geographical indications and designations of origin for agricultural products and foodstuffs when they correspond to one of the situations covered by Article 13 of the said Regulation and regarding the same type of product, on condition that the application for registration of the trade mark has been submitted after the date of filing with the Commission of the application for registration of the designation of origin or geographical indication. (1) The reference to Council Regulation (EC) No 510/2006, must be done to Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs, actual regulation, which article 14.1 reproduces.

10 We can deduce from this regulation framework that the protection provided is certainly reduced or minimal, because: 1) The adverb exclusively lets the registration of descriptive indications as a trademark (this is confirmed by Article 12 b) Reg. 207/2009 concerning the limits of the exclusive right). 2) In practice, we can notice that OHIM does not usually apply rules not included in Reg. 207/2009 (exceptionally, this tendency has been overtaken by Decision January 27, 2011, in the conflict between the PGI "Cítricos de Valencia" and the trademark "Clementinas de Castellón" - process of opposition B ). 3) The interpretation of "... contain or consist of... in a literal way, without having in mind Article 13 of Regulation (EU) No 1151/2012, empties the norm. 4) It is for this reason that, as a result of this interpretation, the structure of protection and promotion of PDO/PGI tries to accumulate the protection offered by Reg. 207/2009 via the register of PDO/PGI as a trade mark.

11 B) Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 There are two ways of protection: Protection into the future. Protection to the past. Protection into the future (Article 14.1º): Where a designation of origin or a geographical indication is registered under this Regulation, the registration of a trade mark the use of which would contravene Article 13 and which relates to a product of the same type shall be refused if the application for registration of the trade mark is submitted after the date of submission of the registration application in respect of the designation of origin or the geographical indication to the Commission. Trade marks registered in breach of the first subparagraph shall be invalidated. Note: To know the scope of the precept, it should be interpreted consistently with Article 13 of Regulation (EC), whose content is as follows...

12 Article 13.1 Regulation (EU) No 1151/2012 Registered names shall be protected against: (a) any direct or indirect commercial use of a registered name in respect of products not covered by the registration where those products are comparable to the products registered under that name or where using the name exploits the reputation of the protected name, including when those products are used as an ingredient; (b) any misuse, imitation or evocation, even if the true origin of the products or services is indicated or if the protected name is translated or accompanied by an expression such as style, type, method, as produced in, imitation or similar, including when those products are used as an ingredient; (c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product that is used on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin; (d) any other practice liable to mislead the consumer as to the true origin of the product.

13 The systematic interpretation of the two exposed rules lets to make the following comments: The case of Article requires a number of requirements: The trade mark must enter into any situations listed in Article 13 of Regulation (EU) No 1151/2012 (let s remember): Direct or indirect use of the geographical designation, its misuse, imitation or evocation by the trade mark. evocation? Any of the three expected effects (deceit, confusion and exploitation of the reputation of others. Must have a production identity ( which relates to a product of the same type "). The time priority of the registered geographica l indication, that is determined by the date of submission of application for recognition of the PDO/PGI to the Commission.

14 Protection to the past (art. 14.2): Without prejudice to Article 6(4), a trade mark the use of which contravenes Article 13(1) which has been applied for, registered, or established by use if that possibility is provided for by the legislation concerned, in good faith within the territory of the Union, before the date on which the application for protection of the designation of origin or geographical indication is submitted to the Commission, may continue to be used and renewed for that product notwithstanding the registration of a designation of origin or geographical indication, provided that no grounds for its invalidity or revocation exist under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark or under Directive 2008/95/EC. In such cases, the use of the protected designation of origin or protected geographical indication shall be permitted as well as use of the relevant trade marks.

15 THANK YOU VERY MUCH FOR YOUR ATTENTION Ángel Martínez Gutiérrez Catedrático de Derecho Mercantil. Universidad de Jaén. (0034)