The protection of geographical indications and appellations of origin
(including agricultural products and foodstuffs)
I. Definition of the terms geographical indication and appellation of origin
What are geographical indications and appellations of origin?
If you look at the map of Hungary, you will discover quite a few appellations of origin. Hungary is an appellation of origin. Next we find the names of regions, cities, lakes, rivers. Those names are all appellations of origin.
While an appellation of origin is always the name of a place, a geographical indication can be anything which is giving a hint towards a place. That means that the term geographical indication is wider than the term appellation of origin. An appellation of origin falls within the definition of geographical indication as it is not only giving a hint towards a place but as in fact it even names a place. Other hints indicating a place can be, for example, colours which are typical for a country such as national colours. They can be monuments which we find at the specific place and which are well-known. They also can be symbols which the people relate to the specific place.
II. The Community Trade Mark Regulation and geographical indications
A lot of products are at some spot in the label marked with the name of the place where they have been produced. So, what if a manufacturer decides that he wants to register this name of the place as a trade mark? As we learned, trade marks do create a monopoly for its owner. Could the manufacturer really register such a term which everybody needs and exclude the competitors from using it?
The legislator of the Community Trade Mark Regulation observed the imperative of the general availibility of geographical indications. He valuated both interests, the one of the individual manufacturer who wants to register a trade mark and the interest in the general availibility. The legislator found that the general interest outweighs the interest of the single manufacture. To secure the general interest, he adopted a provision which does not allow the creation of a monopoly of signs which are needed to mark the place of origin of goods or services.
The legislator introduced this provision as an absolute bar which can be found in Art. 7 (1) (c) CTMR:
Art. 7 (1) (c) CTMR:
The following shall not be registered:
(c) trade marks which consists exclusively of signs or indications which may serve, in trade, to designate (...) the geographical origin (...) of the goods or of rendering of the service, (...).
1. The limitation by exclusively
The word exclusively makes sure that in principle manufacturers are able to use geographical indications in trade marks. Combinations of non-descriptive words or figurative elements with geographical indications are possible. With Art. 7 (1) (c) CTMR the legislator only wants to prevent the creation of a monopoly of the very geographical indication.
Examples:Budapest Herz
UTTAM LONDON
THE EUROPEAN
ACE CAFE LONDON
Amsterdam Republic
Ici Paris XL
I wish to direct your attention to the trade mark The European. It is a registered figurative Community trade mark. If you take a look into the register of the Office for Harmonisation, you will find as well the entry of a refused application of the word mark The European. This application was refused as it was descriptive by using a geographical indication. Only by adding the figurative elements in form of the pigeon and the globe, the application was allowed for registration.
The combination of only descriptive terms, such as a geographical term combined with another term describing the good, will not be registered. Refused was the registration of the word combination MunichFinancialServices as a trade mark for financial services. When being appealed, the decision got approved by the Court of First Instance of the European Union. It stated that the combination describes the services and the place where the services are delivered. It was the undivided opinion that the city of Munich is a well-known city and that the consumer knows that it is a place were financial services are rendered.
When a trade mark consists out of a combination of non-descriptive words or figurative elements and a geographical indication, the owner of the trade mark can only base his rights on the trade mark as a whole and not only on the element being the geographical indication. This means that, when proceeding out of the trademark against the use of signs by others, he can only base his objections on the trade mark as a whole.
2. Relation of the geographical indication to the goods or services in question
Taking again a closer look at the Provision of Art. 7 (1) (c) CTMR, we will see, that the registration of geographical indications is only prohibited when the sign “... may serve in relation to the goods or services as a geographical indication ...”.
a) Interpretation by the Courts
As there have been several times doubts about how this provision has to be interpreted, the European Courts have had to scrutinize the provision. The first and most important decision regarding the provision of Art. 7 (1) (c) CTMR was the Chiemsee decision. In the meantime, it was followed, among others, by a decision concerning the sign Oldenburger and a decision concerning the sign Cloppenburg.
The European Court of Justice stated that the limitation by the term “... may serve ...” should not find its borders by prohibiting the registration of geographical indications solely where they designate specified geographical locations which are already famous or known for the category of goods or services concerned. The Court made clear that all geographical indications which are liable to be used by undertakings must remain available to such undertakings as indications of the geographical origin of goods or services concerned.
The Court explained that the competent authority which examines the requirements for a registration of an application must assess whether a geographical name is currently associated in the mind of the relevant public with the category of goods or services concerned. If it is not associated, the authority should assess if such an association may be established in the future. Here the consideration must be reasonably. For the assumption regards must be given particularly to the degree of familiarity amongst the public with the name in question, with the properties of the place designated by the name, and with the category of goods or services concerned.
The conclusion being drawn by the Court was that Art. 7 (1) (c) CTMR in principle does not preclude the registration of geographical names if those are totally unknown to the relevant class of persons or if they are at least unknown as a designation of a geographical location. Further it stated that the provision also does not preclude names which the public will not associate as geographical origin of the goods due to the type of place. Here the court stated clearly that also the properties of the place have to be considered, e.g. its location, its size and its economic situation. Besides, the Court allowed the consideration of another feature which is special only to geographical indications. It gave thought to the fact that the consumer might connect the name of a place when being confronted with it on a certain good with a pleasurable feeling.
b) Influence on the registration routine of the Office
The decisions of the Courts influenced the manner of the Office to register trade marks.
The first example which can be highlighted is the word Community trade mark SUDAN which is registered for the company BASF. Sudan is an appellation of origin. The consumer knows that the Sudan is a country which is located in northern Africa.
Subject to the application of this trade mark were the goods dyes, pigments, pigment preparations, liquid crystals, colorants, paints.
The Office decided that the word SUDAN is not descriptive for the above named goods. The Office observed the properties, especially the economic situation of SUDAN. It paid respect to the fact that the Sudan exports oil since 1999. But even when paying respect to that fact, after considering the whole situation of the country, the Office came to the conclusion that there is no evidence for a future production in the country of Sudan regarding the goods dyes, pigments, pigments preparations, liquid crystals, colorants, paints. The Office added that also the consumers in question would not consider the term as a geographical indication as the people purchasing the goods (which are coming down to be dyes to colour gasoline) are a small circle of specialised people who are aware that the goods are not produced in Sudan.
Another word Community trade mark being registered is MISSOURI. This trade mark is registered for the company Volkswagen. The term Missouri is an appellation of origin. It is the name of a State of the United States of America. Most consumers will be aware of this fact.
The goods which are registered under the trade mark are among others cars and other locomotion by air and water, including their parts.
Facing both, the name as well as the goods, it is the question, if the consumers will observe the term as geographical indication. Sure enough, cars could be produced in Missouri. But regarding the specific kind of goods, one has to state that in fact it is common practice to name cars after geographical places. We find the trademarks Capri, Wolga, Wartburg, Ibiza, Taunus, Granada, Cordoba, Arosa, Santa Fe, Rio, Toledo. As the consumer is used to this practice, he will not even consider the possibility that the car is produced in Missouri. He does not observe the term with the meaning of a geographical indication but in fact only as a made-up word. He knows that it is a trademark which a company chosed to designate its goods.
Regarding trade marks covering services, the registration of terms which are originally geographical indications seems to be even easier. One example which we find in the register is the trade mark Cloppenburg. Cloppenburg is the name of a city and a county in northern Germany. The city itself counts about 30.000 habitants, the county counts about 150.000 habitants.
The trade mark is registerd for Retail Services.
The Court of First Instance of the European Union considered the fact that most consumers will not know that the term Cloppenburg is the name of a city or a county, as the place is not famous and rather small.Further, the Court took into account that the retail services do not obtain a special quality due to their place of origin. And finally, it stated that for the consumer the place of origin of retail services is regularly not important. The consumer would not choose the services due to their place of origin. After considering the facts, the Court came to the conclusion that the consumer will not think that the retail services do originate from a place called Cloppenburg. The registration of the term for retail services could proceed.
III. Community Collective Mark and the Regulation (EC) 510/2006
We have seen that the Community Trade Mark Regulation only allows the registration of geographical terms for an individual person, when the term is not needed by others for the description of their goods.
But how did the legislator consider the fact that geographical indications may need to be protected as what they are, as geographial indications. The protection might be necessary to keep competitors who are not producing in the named area from misleading the public. But it is also needed to pay respect to the efforts the manufacturers in this place made to achieve a good reputation for their goods.
One finds two main streams of protection of geographical indications. One is the elimination of the misuse of geographical indications by the laws of unfair competition. As this is provided by the national laws, I will turn directly to the second possibility which is offered by provisions of the EU. On this side, manufacturers play a more active role. The laws of the European Union offer to associations of manufacturers the possibility to protect the names of the places where they are producing their goods by registering those names. This protection is despite of the above said possible as it does not limit the use of a geographial indication to one manufacturer. It does not create a monopoly for one manufacturer. By allowing only associations to register the terms, the legislator again considered his valuation regarding the availibility of geographial terms.
Subject to this speech shall be two regimes which we find within the European Union: the Community Collective Mark which is governed by the Community Trade Mark Regulation and the Protected Geographical Indications as well as the Protected Designations of Origin which are governed by the Regulation (EC) 510/2006.
1. Community Collective Mark
We shall start with the regime of the Community Collective Mark as it offers a wider scope of protection regarding to what can be registered.
a) Association
Collective Marks have the same object as Trade Marks. They shall enable the consumers to distinguish the goods of different suppliers. The difference to trade marks is that the Collective Mark shall distinguish the goods or services of the members of one association of those of other manufacturers.
As mentionned before, Collective Marks can only be registered by associations. For the subject of this speech, the reason for producers, manufacturers, dealers or suppliers to group up as an association is their common origin and the interest in using commonly the name of this origin. It does not matter what structure or legal form the association shows. The association only needs to be capable of holding rights in its own name.
EXAMPLE:iBi toys juguetes de ibi
The first Collective Mark coming to our attention is the mark Ibi toys juguetes de ibi which is registered for toys.
Ibi is a town which is located in the hills of the province of Alicante/ Spain. This city is famous for the production of toys. One finds several manufacturers of toys.
EXAMPLE:VETRO ARTISTICO MURANO
Another Collective Mark is Vetro artistico Murano. This Collective mark is registered for glass and products made from glass.
Murano is an island which is located in the north east of Venezia. This island is very known for the production of artifacts made from glass. One finds several manufacturers of these artifacts on the island.
b) Regulations
There is one speciality to the application of a Collective Mark compared to that one of a Trade Mark. The use of a Collective Mark is based on Regulations which are governing the use of the mark. The Regulations are necessary as every member of the association has to know what conditions there are to use the mark and which requirement he has to fulfill.
Therefore the Regulations must provide the following information:
–the name and the address of the owner;
–the purpose of the association;
–the legal representatives of the association;
–the preconditions for a membership in the association;
–the person who are allowed to use the mark;
–the conditions for the use and the sanctions in case of violation of the conditions of use.
To secure the interest that any manufacturer should be able to use the geographical indication, the Regulations must provide that anybody who has the right to use the geographical indication can become a member of the association.
For some Collective Marks, it is not enough that the goods just share their place of origin. Some associations owning a Collective Mark allow the use of the Mark only, if certain quality standards are reached by the individual manufacturer or if certain production procedures are respected. An example for a Collective mark for which the Regulation provides special conditions for its use is the Community Collective Mark VERA PELLE ITALIANA CONCIATA AL VEGETALE.
31 tanneries are part of the Consortium who is owning the above trade mark. The manufacturers are grouped up in the association for two reasons. First, they are located in the same place of business, being Italy. Second, they all have one goal to produce high quality leather by using a natural tanning process without any use of chemical substances. The specific steps and requirements of the tanning process are described in the Regulation of the Community Collective Mark.
2. Council Regulation on the protection of geographial indications and designations of origin for agricultural products and foodstuffs, (EC) 510/2006
The Council Regulation (EC) 510/2006 on the protection of geographial indications and designations of origin for agricultural products and foodstuffs was adopted in March of this year. Nevertheless, the regime, which this Regulation embodiest, dates back to the year 1992 when it was introduced by a parent Regulation, the Regulation (EC) 2081/92.
a) Agricultural products and foodstuffs
Subject to the Regulation is the protection of appellations of origin by entering them in an independent register. The range of appellations of origin, which the Regulation protects, is limited in several aspects. As the title of the Regulation tells us, it is only offering protection to a limited scope of products. It only covers the protection of appellations of origin of agricultural products and foodstuffs. We find the individual products which the Regulation comprehends enumerated in the annex of the EC-Treaty and in the Regulation. For a better overview, the products are split up in three different sections.