Greek court finds that similar GIs and plant variety names can lawfully coexist in Kalamata Olives decision

Earlier this year, the Greek Council of State (Συμβούλιο της Επικρατείας) had the opportunity to consider the relationship between plant variety names and geographical indications (GIs). The decision was handed down on the 2nd of April 2024 (Case No. 428/2024), but has just been translated into English and published courtesy of GRUR International. 

A Kat thinking about olives on pizza
for no apparent reason...

As IPKat readers have previously seen in the dispute about the registration of Prosecco as a GI in Singapore, conflicts between plant variety names and geographical indications can be difficult to resolve. After many years of controversy, the Council of State ultimately decided that growers of the 'Kalamata' variety can continue to use the name, even if the production took place outside the area protected by the Protected Designation of Origin (PDO) of the same name.

The Facts and Background

"Ελιά Καλαμάτας / Elia Kalamatas" (which translates as "Olive of Kalamata") was registered as a PDO in the EU in 1996, for table olives produced in the Messenia region in southwest Peloponnese.

This eventually led to a dispute about whether olive traders outside of the protected area, who had been using the plant variety name 'Kalamata' (or 'Calamata') for many years, should be restrained from using the name. The matter escalated in 2018, when the Greek Minister of Rural Development and Food announced that the 'Kalamata' variety of table olives would be added to the National List of plant varieties. He said that the intention of the decision was that:

we want to strengthen ‘Kalamata olives PDO’ by elevating its quality standards and at the same time enable the Kalamata cultivar to be freely traded in the European and international markets.

However, in 2022, the Council of State overturned the Ministerial Decree on the grounds that the variety name amounted to direct or indirect use of a registered GI name for commercial purposes (Case No. 1149/2022). The Minister disagreed with this decision, commenting that it was "not legally justified due to lack of essential technical judgment of the competent bodies". Therefore, a few months after the Council of State decision, the Minister again decreed that the 'Kalamata' variety should be re-registered on the National List.

The Ministerial Decree relied on evidence that the name of the plant variety 'Kalamata' (or 'Calamata') had been in actual use for many years. An opinion of the Reproductive Material Technical Committee (TEPY) and a Technical Report prepared in 2022 showed that the name was used in legislation on exports dating as far back as 1954, and that 'Kalamata' had been adopted as a compulsory name for the variety in 1979 by Presidential Decree 221/1979. This actual use of the variety name extended to plants grown outside of the area protected by the PDO. 

The Law and Findings

The decision was made under the previous Agri-GI Regulation (1151/2012). Two provisions were at issue in this case:

• Article 6(2) states that "A name may not be registered as a designation of origin or geographical indication where it conflicts with a name of a plant variety or an animal breed and is likely to mislead the consumer as to the true origin of the product."
• Article 42 states that the 2012 Regulation "shall not prevent the placing on the market of products the labelling of which includes a name... that contains or comprises the name of a plant variety or animal breed", as long as certain conditions are met.

An important finding from the Council of State was that the 2012 Regulation makes no distinction between variety names that have been officially registered in a special catalogue of varieties (such as a National List or EU Common Catalogue of approved varieties) and those that have only been used. Therefore, it was enough to prove actual use of the variety name.

The Council of State noted the longstanding use of the 'Kalamata' variety name in association with plants cultivated throughout Greece, which meant that the variety had acquired an excellent reputation amongst consumers in Greece and abroad, who are the primary intended recipients of the products produced from that variety. By contrast, the Kalamata PDO product had limited spread. Indeed, the reputation of the plant variety had been leveraged to promote and, by extension, develop the reputation of the PDO product registered at a much later date.

This meant that consumers understand the name 'Kalamata' as the name of a specific plant variety, not as the name of a product produced exclusively in the PDO area, let alone the specific PDO product ‘Elia Kalamatas’. The Council of State concluded that the conditions in Article 42 were met: "there is no likelihood of misleading consumers, no exploitation of the reputation of the PDO product, and no unfair competition."

Discussion

Ángela H. Martínez López recently highlighted the challenges for breeders who may innocently seek to evoke the widely-known connotation of certain GIs when they baptise their botanical inventions, without realising that the broad scope of European GI protection may prohibit such naming practices.

This case demonstrates that the situation is different for pre-existing variety names. GI laws have sought to maintain a fair balance to ensure that existing variety denominations can perform their function as a generic name that must accompany the sale of a variety, which allows for traceability and quality assurance of agricultural production.