This document summarizes a presentation on the protection of geographical indications (GIs) in the EU. It discusses the differences between GIs and trademarks, and the relationship between the two. There are three main scenarios for the relationship: 1) where the GI prevails over the trademark due to legal protections for GIs, 2) where both the GI and trademark can coexist, and 3) where an established trademark may prevent the registration of a new GI. The presentation provides examples and analyses relevant case law to illustrate these scenarios.

1. THE PROTECTION OF
GEOGRAPHICAL INDICATIONS
IN THE EU:
scope of protection and relationship
between trademarks and GIs
AAAML X International Congress 2013
Edith Van den Eede
Italian and European trademark attorney
Asociación Antiguos Alumnos de Magíster Lucentinvs
Parma, Italy15 March 2013

2. TOPICS
I. GIs versus Trademarks
II. Relationship between GIs and Trademarks
III. Concluding remarks

3. I. Geographical Indications versus Trademarks
1. Setting the scene: key concepts
2. Protection of GIs and TMs in the EU
Examples
GI (P.D.O.): Collective mark: Individual mark:
PARMIGIANO REGGIANO CONSORZIO DEL FORMAGGIO
PARMIGIANO REGGIANO (word)

4. I. Geographical Indications versus Trademarks
1. Setting the scene:
key concepts and differences

5. I. GIs versus Trademarks: 1. Setting the scene
GEOGRAPHICAL INDICATIONS TRADEMARKS
(PDO/PGI)
Definition Geographical origin (link) Entrepreneurial origin*
Objective Protection of consumers and producers Distinguishing products/services
Required characteristic Historical (social and cultural) recognition New (available)
Application scope Products originating in geographical area Products or services
Ownership of right Co-ownership/groups Individual
“Official” controls Yes No
Need to be renewed No Yes
Registration/renewal fee No Yes
Transfer possibility No Assignment /Licence
Possibility to become generic No Yes
Type of right Exclusive right Exclusive right
Limitation of the effects No yes
Enforcement Private and/or public Private
*Collective/certification trademark: purpose of guaranteeing the origin/quality/nature of the goods
or services belonging to the particular association

6. I. Geographical Indications versus Trademarks
2. Protection of GIs and Trademarks in the EU

7. I. Geographical Indications versus Trademarks
2. Protection of GIs and Trademarks in the EU
Defence against counterfeiting:
TMs (including collective TMs): comparison between signs and
between products, likelihood of confusion
GIs: certain situations prohibited under GI Regulation (beyond the
likelihood of confusion), comparison between products:

8. I. Geographical Indications versus Trademarks
2. Protection of GIs and Trademarks in the EU
Court of Justice , Case C-87/97 of 4 March 1999 (§ 26):
GORGONZOLA PDO versus CAMBOZOLA trademark
“It is possible [..] for a protected designation to be evoked
where there is no likelihood of confusion between the products
concerned [..]”

9. I. Geographical Indications versus Trademarks
2. Protection of GIs and Trademarks in the EU
TMs (including collective TMs): limitations of effects provided for:
« descriptive use defence »
(legitimate use by a 3rd party, in trade, of a sign identical or similar to a
trademark ̶ indications concerning the kind, quality, quantity, intended purpose, value,
geographical origin, the time of production of the goods, or other characteristics of the
goods ̶ if in accordance with honest practices)
GIs: no limitations provided for

10. II. Relationship between GIs and Trademarks
1. Scenario where the GI will prevail
2. Coexistence scenario
3. Scenario where the trademark will prevail

11. II. Relationship between GIs and Trademarks
1. Scenario where the GI will prevail : A. Legal framework
Article 14 (1) (1° subparagraph) Regulation (EU) No. 1151/2012:
If a PDO or a PGI is registered under this Regulation, the registration of a trade mark
must be refused where:
- the use of the mark would contravene Article 13 (1) Reg. No. 1151/2012,
- the mark relates to a product of the same type,
- the trade mark application is submitted after the date of submission of the
PDO/PGI registration application to the Commission.
Article 14 (1) (2nd subparagraph) Regulation (EU) No. 1151/2012:
Trademarks registered in breach of the first subparagraph shall be invalidated.

12. II. Relationship between GIs and Trademarks
1. Scenario where the GI will prevail : A. Legal framework
Transitional provisions
Article 16 (3) Regulation (EU) No. 1151/2012:
“This Regulation shall apply without prejudice to any right of coexistence
recognized under Regulation (EC) No 510/2006 in respect of designations
of origin and geographical indications, on the one hand, and trademarks, on
the other”.

13. II. Relationship between GIs and Trademarks : Legal framework
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.

14. II. Relationship between GIs and Trademarks
1. Legal framework
Articles 164 and 7(1)(k) Regulation (EU) No. 207/09 («CTMR»):
« The CTMR shall not affect the PDO/PGI Regulation and in particular Article 14 thereof. »
« Trademarks which contain or consist of a designation of origin or a geographical indication registered
under the PDO/PGI Regulation , shall not be registered when they corresponds to one of the situations
covered by Article 13 of the said Regulation and regarding the same type of product , on the condition
that the application has been submitted after the PDO/PGI filing date with the Commission »
- Article 170 (2) Italian IP Code:
« With reference to trademark applications for agricultural and primary agricultural products and foodstuffs
containing geographical names, the Italian PTO transmits a copy of the mark and any other documentation to the
Ministry of Agriculture that expresses its opinion within 10 days from the receipt of the request. »

15. II. Relationship between GIs and Trademarks
1. Scenario where the GI will prevail : B. Relevant case law
General Court Case T-291/03 of 12 September 2007:
The existence of the GRANA PADANO PDO precludes the registration of
GRANA BIRAGHI (word) as a CTM for class 29 goods (‘cheese, in particular cheese
from cows’ milk, mature cheese, hard cheese, whole cheeses, portions of cheese with or without
rind, packaged cheese of various sizes, grated and packaged cheese’).
“It follows that OHIM is bound to apply the CTMR in such a way as not to affect the
protection granted to PDOs by Regulation No 2081/92.
Consequently, OHIM must refuse to register any mark which is covered by one of the situations
described in Article 13 of Regulation No 2081/92 and, if the mark has already been
registered, must declare that registration to be invalid” (§55/56)

16. Court of Justice Joined Cases C-4/10&C-27/10 of 14 July 2011:
The use of a mark containing the element COGNAC for spirit drinks which do not
meet the relevant specifications may be categorized as an ‘evocation’ for the purposes of
Article 16(b) of Regulation No. 110/2008.
=> The registration of a mark containing a geographical indication, or a term
corresponding to that indication and its translation, with respect to spirit drinks which
do not meet the specifications set for that indication, must be refused or invalidated.
Wide scope of ‘comparable products’: “regardless of their various categories, ‘spirit
drinks’ covers drinks which have common objective characteristics and which are
consumed, from the point of view of the relevant public, on occasions which are largely
identical. Furthermore, they are frequently distributed through the same channels and
subject to similar marketing rules.” (§ 54)

17. II. Relationship between GIs and Trademarks
1. Scenario where the GI will prevail : B. Relevant case law
General Court in Case T-237/08 of 11 May 2010:
The existence of ‘el Palomar’ (name of a local administrative area in
Spain, in the sub-region Clariano, included in the area of production
Protected by the registered designation of origin VALENCIA)
precludes the registration of CUVEE PALOMAR (word) as a CTM
for wine.

18. II. Relationship between GIs and Trademarks
1. Scenario where the GI will prevail : B. Relevant case law
OHIM Cancellation Division decision of 6 October 2004
in Case 609C703884/1
Invalidation of the trademark RONCARIFORT (word) registered for
(amongst others) ‘cheese’ on the basis of the earlier ROQUEFORT
PDO (invalidation for all products/services claimed)
OHIM Opposition Division decision of 7 December 2010
in Case B001496275
Rejection of the trademark DANAZOLA (word) filed for (amongst
others) ‘dairy products’ on the basis of the earlier GORGONZOLA
PDO

19. II. Relationship between GIs and Trademarks
1. Scenario where the GI will prevail : B. Relevant case law
OHIM Opposition Division decision of 27 January 2011
in Case B001354689
Rejection of the trademark CASTELLON CLEMENTINES
(figurative) filed for products in classes 31 and 32, and services in class
35, on the basis of the earlier CITRICOS VALENCIANOS PGI
OHIM Board of Appeal decision of 26 October 2012
in Case R1731/2012-2
Rejection of the trademark CAZORLIVA (figurative) filed for
(amongst others) ‘olive oil’ in class 29 and related services in class 35 on
the basis of the earlier SIERRA DE CAZORLA PDO

20. II. Relationship between GIs and Trademarks
2. Coexistence scenario : A. Legal framework
Article 14 (2) (1° subparagraph) Regulation (EU) No. 1151/2012:
Despite the registration of a PDO/PGI , a trademark the use of which contravenes
Article 13(1), may continue to be used and renewed for that product if:
- Applied for, registered (or established by use if that possibility is provided for by
the legislation concerned) in good faith within the EU territory, before the
PDO/PGI application date with the Commission,
- Provided that no grounds for its invalidity or revocation exist under the CTMR or
under Directive 2008/95/EC ( « TM Directive » )
⇒ « In such cases, the use of the PDO or PGI shall be permitted as well as use of the relevant
trademarks »

21. II. Relationship between GIs and Trademarks
2. Coexistence scenario :
B. Relevant case law
Court of Justice Case C-120/08 of 22 December 2010:
Article 14(1) of Regulation No. 2081/92 is applicable for resolving the conflict
between a name validly registered as a PGI in accordance with the simplified
procedure under Article 17 of that regulation and a trademark corresponding to
one of the situations referred to in Article 13 relating to the same type of product,
the application for registration of which was submitted both before the registration
of that name and before the entry into force of Regulation No. 692/2003
modifying Regulation No. 2081/92.
The date of the entry into force of the registration of that name constitutes the
reference date for the purposes of Article 14(1).

22. II. Relationship between GIs and Trademarks
2. Coexistence scenario :
B. Relevant case law
Court of Justice Case C-343/07 of 2 July 2009:
Article 14(2) implies that there must be an analysis, intended inter alia for the
authorities and courts called upon to apply the provisions in question, after
registration.
That analysis thus calls for an examination of the facts and of national,
Community or international law, which it is for the national court alone to carry
out, if necessary making a reference for a preliminary ruling under Art. 234 EC
Corte di Cassazione Case 15958 of 20 September 2012:
Final instance decision of the Italian Supreme Court confirming the Turin
Appeal Court decision allowing co-existence of Bayerisches Bier PGI with the
Dutch BAVARIA branded beer

23. II. Relationship between GIs and Trademarks
2. Coexistence scenario :
Commission Regulation No. 32/2010 of 14 January 2010 entering
a name in the PDO/PGI register :
- Czech Republic application to register the name Jihočeská Zlatá Niva
- Objection by Slovakia on the basis that registration of the name would
jeopardize the existence of prior trademarks registered in Slovakia.
- No sufficient evidence that registration of the name would be liable to
mislead consumers as to the true identity of the product: no evidence on the
degree of distinctiveness of the mark due to its reputation, renown and length
of time it was used (only evidence that the name can be associated with a
name NIVA)
- The NIVA term was used in a generic way.

24. II. Relationship between GIs and Trademarks
2. Coexistence scenario :
Tribunal Superior de Justicia Madrid in Case No. 1519/2012 of 8
November 2012 and Case No. 1582/2012 of 15 November 2012:
- Invalidating the previous decisions of the Spanish PTO to refuse the
registration of LAMBRUSCO ANTICO CASATO (figurative) and
LAMBRUSCO DELL’EMILIA CANOTTIERI (figurative) for “Lambrusco
wine” in class 33
- LAMBRUSCO is generic (vine, species of grape), registered PDOs being:
Lambrusco Grasparossa di Castelvetro, Lambrusco Mantovano, Lambrusco
Salamino di Santa Croce and Lambrusco di Sorbara

25. II. Relationship between GIs and Trademarks
3. Scenario where the trademark will prevail: A. Legal framework
Article 6(4) Regulation (EU) No. 1151/2012:
A name proposed for registration as a designation of origin or geographical
indication shall not be registered where:
- in light of a trademark’s reputation and renown,
- and the length of time it has been used,
- registration of the name proposed as the designation of origin or
geographical indication , could be liable to mislead the consumer as to
the true identity of the product.

26. II. Relationship between GIs and Trademarks
3. Scenario where the trademark will prevail: B. Relevant case law
Corte di Cassazione Case 15958 of 20 September 2012:
Third requirement missing (lack of deception)

27. III. Concluding remarks
GRAZIE !!
Edith Van den Eede
Italian and European Trademark Attorney
E-mail: Edith.VandenEede@praxi-ip.com
Phone: +39 06 397 499 85