GEOGRAPHICAL INDICATIONS COMMITTEE

GEOGRAPHICAL INDICATIONS COMMITTEE Contribution to ECTA s comments on draft amendments to OHIM s Guidelines, WP2, 2014 In accordance with its specific competencies, the Geographical Indications Committee will provide its input on the amendments affecting directly GIs and related signs (traditional terms and traditional specialities guaranteed), i.e. Articles 7.1 (j) and (k) CTMR, and also the GI related aspects of Article 8.4 CTMR. 1/ GIs as absolute grounds for refusal, Articles 7.1 (j) and (k) CTMR The Office has completely re-drafted the parts dedicated to the implementation of Articles 7.1 (j) and 7.1 (k) CTMR, in the part of the Guidelines dedicated to Absolute Grounds for Refusal: parts 2.9 & 2.10, pages 37 to 69. The modifications brought are impressive: in a couple of years only, GIs have occupied a very relevant place in the Guidelines, and in the practice, while they were previously totally left apart. The mere fact that over 30 pages of the Guidelines are now dedicated to the interpretation of the absolute grounds for refusal dealing specifically with GIs speaks for itself. ECTA can solely congratulate the Office for this development. In this respect, we note that the draft follows a very systematic (we could even say scholar ) approach, with many explanations and examples. We have no comments regarding the overall structure, which is perfectly fine. ECTA Secretariat, Rue des Colonies 18/24, 9th Floor, BE- Brussels, Belgium Tel 32/2-513 52 85 Fax 32/2-513 09 14 E-Mail ecta@ecta.org Internet http://www.ecta.eu A company limited by guarantee. Reg. in England and Wales No. 1520996. Reg. address: 15 Southampton Place, London WC1A 2AJ, England. VAT No. BE0851518062

In the end, the current draft is a confirmation of the practice implemented last year. Nothing has changed in terms of substance, and in this respect the Office already knows the position of ECTA: the new practice is a great step forward, very much welcome, but not an entirely correct or complete one, in our opinion. Basically, these are the remaining areas of discrepancy (some of which are referred to in the developments): - Direct enforcement of the GI Regulations on Wine, Spirits and Foodstuff; - Enforcement, also, of the Regulation on Aromatised Wines; - Enforcement of the Regulations covering related signs, such as Traditional terms and Traditional Specialties Guaranteed. Actually, it would make perfect sense, for the Office, to anticipate the innovations of the Legislative Package; - Correct enforcement of the Spirits Regulation (the grounds for refusal of trade marks are very broad); - Wider approach to the concept of comparable goods (see, in this respect, the position paper which was communicated to the Office in January 2014). This being said, you will find below our comments concerning specifically the draft guidelines: 1.1/ Article 7.1.j (par. 2.9 of the draft) Page 38 (par. 2.9.1), and throughout the document New legal framework for Wines Regulation No. 1234/2007 (Wine) was recently repealed. The current legal framework now corresponds to Regulation No. 1308/2013. ECTA GI Cttee Comments on draft guidelines of the OHIM, 2014 2

- While this new Regulation does not bring changes in substance (scope of protection of PDOs and PGIs, and relationship with trade marks), the numbering of the relevant provisions and annexes have changed. This is the table of equivalence: Regulation 1234/2007 Regulation 1308/2013 Article 118b(1) Article 93 Article 118l(1) Article 102.1 Article 118m(2) Article 103.2 Annexe XIb Annexe VII, part 2 Page 40 (par. 2.9.2.1) GI databases We are a little bit surprised to read that the examiners are invited to refer to the databases of the Commission (E-Bachus, as far as wines are concerned). Does it imply that the own Excel database of the Office is not reliable any longer? Is it not easier, indeed, to refer to a single and global database, instead of having to check each and every database of the Commission? The impossibility to rely on a single, exhaustive, official, database for GIs protected in the EU, is really a strong concern. We know that this is not the responsibility of the OHIM, but maybe your Office should take initiatives in this field. The OHIM could play a much greater role for GIs, in the future. Besides, should we infer from the last paragraph of this page that all the GIs protected as a result of agreements with third countries are necessarily registered in the databases of the Commission? Further clarification would be appreciated. As you know, the Fourth Board of Appeal has considered that a GI originating in the EU, and protected as a result of an agreement concluded with a third country, should also be enforced by the OHIM, even if it is not registered as such as a PDO / PGI in a EU scheme (R1546/2011-4, 19.06.2013, Font de la Figuera ). This is probably a rare situation, but it seems that the draft does not follow this interpretation. Again, clarification would be appreciated. Pages 44 and 45 (par 2.9.2.2) Concept of evocation ECTA GI Cttee Comments on draft guidelines of the OHIM, 2014 3

We do not agree when the draft mentions that the Office considers the terms imitation and evocation as two corollaries of essentially the same concept (etc.). Evocation is a different concept overall, and it is much wider that the concept of imitation, as known in trade mark litigation. For example, a GI can be evoked by the mere reproduction of a specific design or shape, typical of the GI, while this would certainly not be considered as an imitation under trade mark law. In this respect, ECTA fully supports, for example, the approach taken by the CTM Court of Alicante in the Mamiella case (judgement No. 419/13 of 31/10/2013, Consejo Regulador de la D.O. Protegida Queso Tetilla v- Industrias Lacteas Monteverde S.A.). The second example provided for in the table might not be the most appropriate one. Indeed, in this case the BoA considered that the expression Salame di Parma was an evocation of the GI Prosciutto di Parma, but it forgot to mention, also, that the word PARMIGIANI was also an evocation of the GI Parmigiano Reggiano (while this CTM covered a variety of foodstuff, including dairy products. Page 47 (par. 2.9.2.2) translated PGOs / PGIs We note that the draft provides for an invented example: COGNAC v- KONJAKKI. But reference could be made to real cases, including for example the refusal of a CTM Uvita de Plata BORGOÑA No. 2417269 for wine. Page 48 (par. 2.9.2.2) reputation of PDOs / PGIs As mentioned in our introductory comments: the OHIM does not apply correctly the Spirits Regulation. This Regulation makes it mandatory to refuse trade marks that may imitate or evocate GIs registered for spirits, not only for spirits, but also for comparable goods, and also for non comparable goods if the use of the trade mark would be detrimental to the reputation of the GI. Pages 48 and 49 (par. 2.9.2.3) relevant goods ECTA GI Cttee Comments on draft guidelines of the OHIM, 2014 4

We strongly disagree with the approach taken in the Manual. The Office cannot, in any case, state that the reference to a specific annexe, and the reference to the notion of comparable goods, is to be considered as synonyms. We cannot believe that this is what the legislator intends. A basic scope of protection is provided for, when the GI Regulations refer to the goods listed in a specific annexe. And then, a wider approach is also offered, when the same regulations refer to the concept of comparable goods. The approach of the Manual is wrong, and it is also misleading: the notion of comparable goods plays an important role when it comes to applying relative grounds for refusal, and this notion cannot be interpreted as if it was equivalent to the reference to a mere annexe. In this respect, we also refer to the position paper on comparable goods, sent by ECTA in January. 1.2/ Article 7.1.k (par. 2.10 of the draft) Page 63 (par. 2.10.2.3) notion of comparable goods Is it really true that the notions of products of the same type and comparable products should be interpreted as being synonyms? This is far from being evident, in our opinion. Basically, if the legislator itself has used a different wording, in the very same regulation, there might be a reason for that. Did the Office liaise with the Commission, in this respect? One could be tempted to make a comparison with the GI Regulation for wines, which has adopted a three steps approach: a reference to goods listed in an annexe, then a wider scope of protection for comparable goods, and finally a broader protection for GIs with a specific reputation, if a number of conditions are fulfilled. Would it be plausible to consider that the expression products of the same type constitutes a first range of protection, following the example of the annexes referred to in other regulations? In this sense, the notion of products of the same type refers, basically, to identical goods. Besides, and as expressed in our previous position paper, the approach to the notion of comparable goods is deemed too strict. For examples, fruit should be held comparable to a product such as jam (page 64). ECTA GI Cttee Comments on draft guidelines of the OHIM, 2014 5

Page 66 (par. 2.10.2.3) Products used as ingredients If a PDO/PGI is used as an ingredient, this does not necessarily mean that the PDO/PGI may be mentioned in the name of the foodstuff. In this regard, some guidance is given by the Commission Communication Guidelines on the labelling of foodstuffs using protected designations of origin (PDOs) or protected geographical indications (PGIs) as ingredients: http://eurlex.europa.eu/lexuriserv/lexuriserv.do?uri=oj:c:2010:341:0003:0004:en:pdf Indeed, amongst others, the Commission takes the view that a name registered as a PDO or PGI may only be mentioned in or close to the trade name of a foodstuff incorporating products benefiting from a registered name, as well as in the labelling, presentation and advertising relating to that foodstuff, provided that certain conditions are met, and in particular, that: - The foodstuff in question should not contain any other comparable ingredient, i.e. any other ingredient which may partially or totally replace the ingredient benefiting from a PDO or PGI. As a non-restrictive example of the concept of comparable ingredient, the Commission considers that a blue-veined cheese (commonly known as blue cheese ) could be considered comparable to Roquefort cheese. - This ingredient should also be used in sufficient quantities to confer an essential characteristic on the foodstuff concerned. However, given the wide range of possible scenarios, the Commission is not able to suggest a minimum percentage to be uniformly applied. As an example, the incorporation of a minimum amount of a spice benefiting from a PDO/PGI in a foodstuff could, if appropriate, be sufficient to confer an essential characteristic on that foodstuff. By contrast, the incorporation of a minimum amount of meat benefiting from a PDO/PGI in a foodstuff would not a priori be sufficient to confer an essential characteristic on a foodstuff. - The percentage of incorporation of an ingredient with a PDO or PGI should ideally be indicated in or in close proximity to the trade name of the relevant foodstuff or, failing that, in the list of ingredients, in direct relation to the ingredient in question. ECTA GI Cttee Comments on draft guidelines of the OHIM, 2014 6

Now, whether the Office should take into account these elements when examining a trade mark, and how it should conduct such examination, is a very difficult question. On the one side, one could take the view that the draft guidelines do not appear to be in line with the above Communication of the Commission. Accordingly, and as the Office is probably not able to establish criteria to assess the commercial relevance of an ingredient, and neither will the Office know whether the PDO/PGI ingredient will be actually used in the foodstuff, in which quantity, if other comparable ingredients will be used as well, etc., then a CTM should also be refused for products that may contain the PDO/PGI as ingredients. For example, abstractly and ex ante, a figurative trademark application containing, e.g., Pizza with ROQUEFORT, even if restricted for Pizza with cheese complying with the specification for PDO ROQUEFORT, could be rejected. Indeed, can it really be considered correct to obtain, as a third party, that easily a trade mark registration containing a PDO/PGI (without any guarantees): shouldn t it be enough to be able to use the PDO/PGI in, or close to, the label or trade name (upon meeting certain conditions)? But, on the other side, one could also be of the opinion that the reference to the GI may be to some extent legitimate, and that only the actual use of the trade mark will determine whether it is misleading or not. This is a difficult question, and at this stage ECTA is solely providing some thoughts, for further discussion. These comments are made irrespective of possible course of actions based on relative grounds for refusal (see also in part 2 below). Indeed, for example, it is reasonable to obtain the refusal of a CTMA (BRAND + CHAMPAGNE) for ice cream, even if the specification is limited to ice cream containing wine with the PDO Champagne as an ingredient? Indeed, in such case the registration of this CTM could exploit the reputation of Champagne (to be evaluated on a case by case basis, of course). ECTA GI Cttee Comments on draft guidelines of the OHIM, 2014 7

2/ GIs as relative grounds for refusal, Article 8.4 CTMR Again, ECTA wishes to express its strong support to the development of the Guidelines in the field of GIs, including in the developments of Article 8.4 CTMR. The Guidelines are clear and very complete. Still, we wish to mention some discrepancies or suggestions, as follows: Page 10 (par. 3.2.4.1), and throughout the document current Wine Regulation Regulation No. 1234/2007 (Wine) was recently repealed. The current legal framework now corresponds to Regulation No. 1308/2013. Page 14 (par. 3.2.4.4) scope of protection of GIs and services In contrast, for relative grounds, the provisions of the EU Regulations preventing use contemplate situations where a PGI can be invoked even against goods or services which fall outside the scope of objectionable goods under absolute grounds, subject to the conditions of the relevant provisions of the corresponding EU regulations. For instance, under Article 13(1)(a), Article 118m(2)(a)(ii) and Article 16(a) of the Foodstuffs, Wines and Spirits Regulations respectively, a PGI which has been proven to have repute can be invoked against products and services which would not be objectionable under absolute grounds. We note that the Guidelines refer, for the first time, to the possible refusal of a CTMA which designates services, in compliance with the relevant provisions of some of the GI Regulations. This is much welcome, although some clarification is necessary. Will the refusals be limited to situations where the CTMA could unduly benefit from the reputation of the GI, as indicated in the second part of the above-quoted paragraph? ECTA GI Cttee Comments on draft guidelines of the OHIM, 2014 8

Page 14, last paragraph (3.2.4.4) scope of protection of GIs and reputation Nevertheless, either under EU or national legislation, the scope of protection of PGIs cannot exceed what is required in order to safeguard the function of the PGI, the function in question is to designate goods as being from a particular geographic origin and the special qualities connected therewith. Unlike other signs, PGIs are not used to indicate the commercial origin of goods and they afford no protection in this regard. Therefore, where the specification of a CTMA is limited to goods in conformity with the specification of the relevant protected PGI, the function of the PGI in question is safeguarded in relation to those products because the CTMA only covers products from the particular geographic origin and the special qualities connected therewith. Consequently, an opposition against a CTMA which has been appropriately limited will not succeed. See in this regard Article 12(1) of the Foodstuffs Regulation or Article 118m of the Wines Regulation. We believe that this statement is relatively unclear and is likely to be misunderstood. It fails to take into account the fact that the protection afforded by the different EU Regulations in the fields of PDOs/PGIs also aims to prevent third parties from unfairly exploiting the reputation of the concerned PDO/PGI. We do not quite like the general rule which is being expressed; the OHIM should always conduct an assessment on a case-by-case basis. This should, at the very least, be the case as regards CTMAs filed for goods which are not themselves in conformity with the specification of the relevant protected PDO/PGI but only contain as one of their ingredients a product which is in conformity with the specification of the relevant protected PDO/PGI. Assume, for example, that a CTMA is filed for chocolates which contain, as one of their ingredients, sparkling wines in conformity with the specification of the relevant PDO/PGI. In such cases, the OHIM should still check, in opposition proceedings, if the CTMA unduly exploits the reputation of the PDO/PGI (for instance because the PDO/PGI is mentioned in a way which is overly dominant in the overall trade mark). Page 15 (3.2.4.4) use in the course of trade ECTA GI Cttee Comments on draft guidelines of the OHIM, 2014 9

It would be appropriate to emphasize here that documents mentioning a PDO/PGI in a nontrade context (e.g. books, encyclopedias, dictionaries, etc.), while not relevant to prove that the sign is used in the course of trade of more than mere local significance, may, on the contrary, be relevant when it comes to proving the reputation of the PDO/PGI. ECTA GI Cttee Comments on draft guidelines of the OHIM, 2014 10