Of geographical indications and their reputation

This Kat has recently assisted to a “Track Case Law” webinar, delivered by speakers from the Boards of Appeal (BoA) of the EUIPO. The webinar covered latest judgments of the BoA, General Court (GC) and Court of Justice of the European Union (CJEU). During the discussion, the speakers raised an interesting point: are all geographical indications (GIs) intrinsically reputed?

The case that offered the opportunity to address the above saw the producers of protected designation of origin (PDO) “Cava” opposing an application for a three-dimensional EU trade mark “CHENINE Brut PREMIUM CAVA BOTTLE” (on the right). The grounds of opposition were the registered PDO “Cava” and on two earlier EUTMs, “Consejo Regulador Cava” and “CAVA DE PARAJE CALIFICADO” (both registered in Cl. 33). For the two earlier EUTMs, the opponent claimed that they had reputation and relied on Art. 8(5) EUTMR.

The Opposition Division rejected the opposition in full. Among other things, it found that “CAVA” (the only common element in the earlier trade marks) was a descriptive term, and that the opponent had failed to provide evidence that the earlier trade marks had a reputation. Therefore, Art. 8(5) EUTMR was not applicable. With regard to the conflict with PDO “Cava”, the Opposition Division analysed, item by item, the scope of GI protection under Regulation No 1308/2013 (such as protection against misleading indication or against evocation). It concluded that the EUTM application did not conflict with PDO “Cava”.

The BoA essentially confirmed this decision (case R 981/2021-1). The BoA reiterated that the opponent had failed to provide proof of reputation for its earlier trade marks. When addressing the conflict with PDO “Cava”, the BoA recalled that all GIs are intrinsically reputed as per EUIPO Guidelines. Nevertheless, the opponent should have provided proof that such reputation was being unduly exploited by the applicant (para. 63). The appeal was dismissed, and the application was granted.

Now, as readers have noticed, the BoA did not question Cava’s reputation as a geographical indication. This issue was only raised with regard to trade mark rights. Nevertheless, during the EUIPO webinar, the speakers also discussed whether all GIs may be considered intrinsically reputed. As one of the speakers observed, the EU Register includes some 4000 GIs, while consumers would hardly name 50 of them. The speaker argued that there are two types of GI reputation: the reputational link with the place of production (used when registering a GI) and the reputation, which is relied upon when determining the scope of protection.

Indeed, the link between the product and its place of production is the key concept of the EU GI system. Scholars identify two broad categories of such origin link: terroir link, where there is a connection between the product and environmental or human features of its place of production; and reputational link, when the product is associated with a specific area (i.e. due to a long-standing history), without there being a physical connection between the two.

The protected product has to rely on one of the two: terroir or reputational link. That is so even during the registration stage, part of the GIs are registered only through their terroir link and do not claim having a reputation. At the same time, the two links are not mutually exclusive. For instance, the PDO “Queso Manchego” mentions both how La Mancha’s lime-clay soils define the peculiar characteristics of the cheese, as well as how this cheese was produced “since ancient times”.

Beyond the reputational link, which is used for the registration, the criterion of reputation is also used to define the GI’s scope of protection. For instance, under Art. 103(2)(a) Regulation 1308/2013 GIs are protected against undue exploitation of their reputation. For this second type of reputation, it was argued during the EUIPO webinar, we shall apply a trade mark approach. That is: reputation shall be proven on a case-by-case basis, as this Kat has also advocated elsewhere.

In fact, this is already being done in Germany. German legislation differentiates between simple GIs and GIs with “a special reputation” (Art. 127(3) of German Trade Mark Law). GIs with a special reputation have a broader scope of protection, but such special reputation has to be proven. For instance, when resolving a conflict between PGI “Bayerisches Bier” and “Bavaria Holland Bier” trade mark, the Munich Higher Regional court took into account the 500-year-old brewing tradition, the modern-day extensive use at Oktoberfest and in Hofbräuhaus, as well as the fact that “Bayerisches Bier” relied on the reputational link during its registration (case 29 U 5084/03). In the “Hohenloher Landschwein” case, the German Federal Court of Justice accepted market surveys to prove a special reputation (case I ZR 163/19). The case concerned the protection of geographical indications as collective marks, which is also covered under Art. 127(3) of German Trade Mark Law.

The Proposal to review the geographical indications’ system, which the European Commission has recently put forward, suggests revising certain basic concepts within GI law. It might be the right moment to discuss whether all GIs can be considered intrinsically reputed or whether proof of reputation shall be instead required in infringement proceedings.