GIs and complementarity

with other IP rights

EU – India IP Cooperation

Specialised Training on GIs

India, December 2016

Aitor Pomares Attorney-at-Law

1. Complementarity with other IP rights

2. Practical examples

1. Complementarity with other IP rights

Individual TM of the producer

EU official

symbol

Collective TM owned by

the group of producers

Certificate of authenticity

issued by the control body

PGI Packaging / Design

• GI protects only the name, not the graphic elements or the logo.

• However, the product Specification may contain the collective logo of the GI and other label elements: Labelling rules

Why registering complementary IP rights is important?

• Protection over the logo (TMs).

• Protection over the appearance of the product or its packaging (Designs).

TMs

Alternative tool for products excluded from GI protection in the EU (handicraft, manufactured).

Protection may be extended to countries with no GI legislation.

Advisable previous step to the GI registration (TM registration may be obtained in a shorter time).

Licensing (GI may not be licensed): especially for foodstuffs using GIs as ingredients.

Enhancing the protection (reputed TMs are also protected with respect to non-similar goods).

Licensing

PDO “Chufa de Valencia”

Product: Tiger nut

EU Collective TM

31: Tiger nuts complying with the Specifications of the PDO “Chufa de Valencia”

32: Tiger nut milk, beverages and other preparations based on tiger nuts complying with the Specifications of the PDO “Chufa de Valencia”

Previous step to the GI registration

EU Collective TM • Applied for on 5/12/2002 • Registered on 12/7/2004 • In the name of ASOCIACION DE

ORGANIZACIONES DE PRODUCTORES DE PLATANOS DE CANARIAS

PGI “Plátano de Canarias” • Applied for on 11/3/2011 • Registered on 5/11/2013

In between the Collective TM acquired reputation on the market, which later on justified the registration of the PGI

PGI “Café de Colombia”

• Registered in the EU on 13/9/2007

• Applicant group: FEDERACIÓN NACIONAL DE CAFETEROS DE COLOMBIA

EUTMs owned by the applicant group:

Protecting figurative signs and other expressions

Etc…

Registering the expression protected by the GI and/or the logo as a TM

INDIVIDUAL TM: Distinguishes the goods or services of one undertaking from those of other undertakings

Ground for refusal: Signs which designate the geographical origin of the product shall not be registered (art. 7.1.c EUTMR).

COLLECTIVE TM: Distinguishes the goods of the members of the association which is the proprietor of the mark from those of other undertakings

Signs which designate the geographical origin of the product may be registered (art. 66.2 EUTMR)

CERTIFICATION TM*: Distinguishes the goods which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and which are not so certified.

*Coming into force on 1/10/2017

Not

allowed

Type of TM?

Designation of goods?

Assumptions:

• Only products complying with the Specifications shall be distinguished with the GI

• Use of the GI by any operator marketing products conforming to the corresponding Specification

• Both the GIs Regulations and the TM Regulation provide for ex officio protection against TM conflicting with a GI (arts 7.1.j. EUTMR; 14 Reg. 1151/2012; 19.1 Reg. 251/2014; 102.1 Reg. 1308/2013; Reg. 23.1 Reg. 110/2008)

EUIPO’s practice:

Registering the expression protected by the GI and/or the logo as a TM

SIGN GOODS REGISTRATION

consists of, contains or somehow refers to

(imitation, evocation, etc.) a protected GI

cover or are comparable to those protected by the GI

only if the products are restricted to those complying with the

Specifications of the GI

COLLECTIVE TM

To be registered in the name of the group of producers

Class 29: Cheese complying with the

Specifications of the PDO “Parmigiano-Reggiano”

INDIVIDUAL TM

Any producer marketing products which comply with the Specifications

Sign identifying the single producer

PDO “Queso Manchego”

Class 29: Cheese complying with the Specifications of the PDO “Parmigiano-Reggiano”

Comparison

TM / GI

• Different function

• Different scope of protection

TM protected against:

• Identical signs used in relation to identical goods or services

• Similar signs in used in relation to similar goods or services, if there exists a likelihood of confusion

• If the TM is reputed: Identical or similar signs used in relation to non-similar goods or services, if that takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the TM

Comparison

GI 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.

CJEU C-87/97, Judgment of 4/3/1999. PDO “GORGONZOLA” vs. Austrian TM “CAMBOZOLA‘”:

25. Evocation‘ (…) covers a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected.

26. (…) it is possible (…) for a protected designation to be evoked where there is no likelihood of confusion between the products concerned and even where no Community protection extends to the parts of that designation which are echoed in the term or terms at issue.

CJEU 26/2/2008 C-132/05 – PDO “Parmigiano Reggiano” vs. “Parmesan CJEU 14/07/2011 C-4/10 & C-27/10 – “Cognac” vs. “Konjakit”

CJEU 21/1/2016 C-75/15 – “Calvados” vs. “Verlados”: in order to assess the existence of an ‘evocation’ (…) the national court is required to determine whether, when confronted with the name ‘Verlados’, the image triggered in the mind of consumers is that of the product benefiting from the protected geographical indication, namely, in the main proceedings, ‘Calvados’.

Evocation

Evocation

Guidelines of the EUIPO

• Evocation: using a well-known and singular image that is generally taken as a symbol of the particular place of origin of the products covered by the PDO/PGI or a singular shape of the product that is described in the specifications of the PDO/PGI.

PDO/PGI European Union trade mark (invented examples)

Explanation

PORTO (PDO-PT-A1540)

EUTM depicting the ‘Dom Luís I Bridge’

in the city of Porto

A picture of the Dom Luís I Bridge and its riverside is a well-known emblem of the city of Porto. Use

of this image for wines other than those covered by the PDO ‘Porto’

would constitute evocation

2. Practical examples

• Application for INDIVIDUAL TM, in the name of CONSEJO REGULADOR DEL TEQUILA

“TEQUILA” Class 33: ‘Tequila and Tequila-based products; beverages containing Tequila’

Refused (art. 7.1.c EUTMR). Merely descriptive of the geographical origin.

• Application for COLLECTIVE TM, in the name of CONSEJO REGULADOR DEL TEQUILA

“TEQUILA” Class 33: ‘Tequila and Tequila-based products; beverages containing Tequila’

Objection (art. 7.1.j EUTMR) proposing the following restriction of goods:

Class 33: ‘Spirit drinks complying with the Specifications of the GI Tequila; beverages containing Spirit drinks complying with the Specifications of the GI Tequila’.

Application for INDIVIDUAL TM

Name of the

producer

PDO for wines

Class 33: ‘wines produced

in La Rioja (Spain)’

Objection proposing the

following restriction:

“wines complying with the

Specifications of the PDO

“La Rioja”’

Evocation of GI “Tequila”

protected in the EU.

No TM infringement

Possible TM infringement

NO PGI infringement

Both, possible TM infringement and possible PGI infringement

Expert´s name:

Aitor Pomares apomares@berenguer-pomares.com

Expert´s title: IP Lawyer

Thank You

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