Geographical indications of origins and trade marks - ECJ clarifies law

In C-343/07 Bavaria v Bayerishscher Brauerbund, the ECJ had to consider the difficult "crossover" of law of geographical indications of origin and trade marks. Pursuant to Regulation 2081/92 (the regulation which permits the registration of geographical indications of origin), the phrase "Bayerische Bier" was protected as a PGI (Protected Geographical Indication). The Commission considered that the application was well-founded and submitted it to the Regulatory Committee for Geographical Indications and Appellations of Origin. There then followed a lengthy and protracted procedure to determine whether it fulfilled the criteria of Reg.2081/92. In particular, a number of Member States objected to its registration on the basis of the existence of a number of "Bayerische Bier" brands (particularly in the Netherlands and Denmark) and that it was generic. Eventually, the Commission decided that such objections were not well-founded and the Council then adopted Regulation 1347/2001 which registered Bayerische Bier as a PGI. 

In 2004, proceedings in Italy were brought against a Dutch company who was the proprietor of several trade marks for "Bavaria" and produced beer under the brand. The Corte d'appello de Torino referred to the ECJ a number of questions concerning the validity of Regulation 1347/2001 and also whether the fact that it had been adopted after consideration of the registered trade marks meant that such affected the provisions in Regulation 2081/92 which permitted in certain circumstances owners of pre-existing registered trade marks to continue using the marks.

In a lengthy judgment, the ECJ rejected all the arguments that the Reg.1347/2001 was invalid. It had been argued that it was invalid on a number of grounds both procedural and substantive but the ECJ dismissed them. As it said, it could only intervene where the lawfulness of a measure adopted by the Commission was manifestly inappropriate. This was because the Community legislature had a broad discretion as to the adoption of measures. Thus, it said that the Court could only consider whether the measure in question was not vitiated by any manifest error or misuse of powers and that the authority concerned had not manifestly exceeded the limits of its discretion. In particular, it pointed out that Community institutions are required to evaluate a complex economic and social situation.

Interestingly, on the plea that Bayerische Bier was generic (and thus unregistrable under Art.3(1)), the ECJ said that as regards as PGI, the name becomes generic only "if the direct linke, on the one hand, the geographical origin of the product and, on the other hand, a specific quality of that product, its reputation or another characteristic of the product, attributable to that origin, has disappeared, and that the name does no more than describe a style or type of product" (para.107). It held that the mere fact that there existed brands on the market which incorporate the name was not sufficient to meant that the geographical name was unregistrable. As said by the ECJ

"the registration of a PGI..is designed, among other objectives, to prevent the improper use of a name by third parties seeking to profit from the reputation which it has acquired and, moreover, to prevent the disappearance of that reputation as a result of popularisation, through general use outside its geographical origin or detached from a specific quality, reputation or other characteristic which is attributable to that origin and justifies registration" (para.106). In other words, the very fact that the name is being used by third parties becomes a good reason for a PGI being registered. This might be thought somewhat circular i.e. the more generic it has become, the more the need for it to be registered.

Finally, the ECJ confirmed that the fact that the trade marks of third parties have been considered during the grant process does not affect the defence under Art.14(2) of Reg.2081/92. This provision procdies that use of a trade mark corresponding to situations in Art.13 (i.e. where such use would infringe the PGI) which was registered in good faith before the date of the application for a PGI may continue notwithstanding the subsequent registration and where there are no grounds for invalidity or revocation of the mark under Art.3(1)(c) and Art.3(1)(g) of the Trade Mark Directive. Under Art.14(3), a PGI cannot be registered where, in the light of a trade mark's reputation and renown and length of time it has been used, registration is liable to mislead the consumer as to the true identity of the product. 

Standing back, it may be that the ECJ felt that sufficient protection to the Dutch brand owners was provided by Art.14(2) to continue using the mark without the need to invalidate the PGI. Furthermore, it is clear that the grant process for PGI (and particularly, the Bayerische Bier) one is a complex, lengthy procedure involving the sifting through of countless observations by third parties. In that sense, it could be thought of as a decision by a governmental body, which although amenable to judicial review by a court, the court should not substitute itself for that tribunal and hear, in effect, the application for the PGI de novo. UK readers of this will be familiar with such a concept as appeals from the trade mark registry where findings of likelihood of confusion have been made are only subject to review by appellate tribunals where there was an error of principle or the decision was plainly unreasonable. This is because the determination of the likelihood of confusion involves a large number of different factors which all have to be weighted and prioritised As said by the courts, it is a multi-factorial decision.