Is Cognac like Champagne, Finns ask the ECJ

Last week the IPKat, intrigued by a reference for a ruling for a preliminary ruling of the European Court of Justice in a case he knew nothing about, Case C-4/10 Bureau National Interprofessionnel du Cognac v Oy Gust. Ranin (see earlier post here), asked readers if they could furnish him with any further information. His old friend George R. F. Souter (Lammi & Partners Oy, Helsinki) takes up the tale:

"The Finnish company Oy Gust. Ranin applied for national registration of two trade marks (illustrated here) on 19 December 2001. Both were duly registered on 1 January 2003, for products in Class 33 (the “Hienoa Konjakkia” mark for “cognac”, and the “Café Cognac” trade mar for “liqueur including cognac”).

Bureau National Interprofessionel du Cognac, an organization representing the interests of producers in Cognac, filed opposition against both registrations, objecting to the use of the word “Cognac” in the labels. The Finnish Patent & Registration Office rejected the opposition against the “Hienoa Konjakkia” label, but accepted the opposition against the “Café Cognac” label. The reason for the apparently surprising different result lies in the small legend (not easily seen in the above representations) “Product of France” in the “Hienoa Konjakkia” label which, in their opinion, removed any misconception about the origin of the product.

The losing parties promptly appealed to the Board of Appeal of the Patent & Registration Office, which approved the decision in the “Hienoa Konjakkia” case and overturned the decision in the “Café Cognac” case. The reasoning of the Board of Appeal is common to both cases. I attach a translation of the Board of Appeal’s reasoning in the “Café Cognac” case [for ease of reference, this appears as an Appendix below].

Bureau National Interprofessionel du Cognac subsequently appealed both cases to the Finnish Supreme Administrative Court, which referred the questions set out in your e-mail below to the ECJ".

George adds that this appears to be an attempt by the Cognac producers to reserve to themselves the word “Cognac” in trade mark labels, and, as such, I find extremely interesting (not least because of the faint resonance of the old English decision in the so-called “Spanish Champagne” case [J Bollinger and Others v The Costa Brava Wine Company Limited [1961] RPC 116 et seq], the final decision in which, where the court trawled through common law decisions in various jurisdictions in search of an answer, but ignored the pragmatic, and in my view, better, decision in neighbouring Scotland in the so-called “Glenlivet” case, has vaguely annoyed me for many years). George assumes that there will be some British interests at play here.

Appendix: REASONING OF THE BOARD OF APPEAL IN THE “CAFE COGNAC” CASE

The word Cognac included in registration No. 226351 signifies a town in France and the word is known as a name for alcoholic beverages, cognacs, from this area. According to Council Regulation (EEC) No. 1576/89 Article 5 Paragraph 3, instead of distilled alcohol beverages the geographical name COGNAC can be used. However, this Regulation does not regulate the legal protection of trade mark rights in this kind of geographical name so that on the grounds of the Regulation a trade mark application, which includes such a name, should be refused or that a registered trade mark should be nullified. Nor is Council Regulation EEC No. 510/2006 mentioned in Section 14 Subsection 1 Paragraph 11 in the Trade Marks Act, which has been replaced by Council Regulation EC No. 510/2006, applicable to this case now in question. Even though Cognac in the registered mark was known as a geographical name among consumers, it doesn’t give a misleading image of the origin of the trade mark’s goods in the context of liqueurs containing cognac. Taking also into account that consumers understand the word Cognac just as an expression symbolizing the type and the quality of the goods in the whole combination of the mark in question without possibly linking it to the geographical origin, the registered trade mark cannot be considered as misleading to the public concerning the geographical origin of the goods according to the Trade Marks Act Section 14 Subsection 1 Paragraph 11.

The National Board of Patents and Registration’s decision will thus be reversed and the registration of the trade mark maintained in force.

Merpel is totally baffled by all of this and wonders why the fact that one of the labels read 'Product of France' caused the opposition to fail rather than strengthened it. The IPKat says, this is fun! Perhaps someone can supply him with a bottle for his World IP Day celebration ...