Are EU GIs a truly unitary right?

In early March, this Kat had the pleasure of attending a round table on EU geographical indications (GIs) law under the auspices of European Communities Trademark Association (ECTA). At the round table, the speakers discussed the upcoming legal reform, the definition of “evocation”, as well as the conflict between GIs and collective marks.

A statement from one of the speakers drew this Kat’s attention. The speaker in question referred to EU GIs as a “unitary right”. This same definition is suggested in the Proposal for EU GI reform. But can EU GIs, as described in the Proposal, truly be considered a unitary right?

 
Unitary character of EUTMs and designs

The notion of unitary right (or “unitary character”) comes from EU trade mark (EUTM) and design law. Following Art. 1(2) EUTM Regulation, an EUTM has a unitary character and equal effect throughout the EU. A “unitary” legal title provides uniform trade mark protection across all EU Member States (MS). This same principle is enshrined in art. 1(3) Design Regulation.

The unitary character of EUTMs and designs is embodied at the levels of both protection and enforcement. A unitary protection is achieved for a EUTM or design since both rights are registered and cancelled by resort to a single EU-wide procedure before the EU Intellectual Property Office (EUIPO).

Unitary enforcement is achieved through pan-EU litigation under Arts. 123-124 EUTM Regulation and Arts. 80-81 Design Regulation. Accordingly, EU MS have designated, from among their existing national courts, so-called EU trade mark and designs courts. For instance, the Paris Court of First Instance is the only first instance court in France, which acts as EU TM court.

In the case of an infringement occurring simultaneously in several EU MS, a right holder may apply to competent EU TM court, which will then rule on all of the infringement actions – and provide appropriate judicial relief, such as a preliminary injunction, freezing order or an award of damages.

As noted, the effect of the resolution of such litigation will be pan-EU. For example, upon a decision by the Paris Court of First Instance, the defendant would be prohibited from continuing infringing actions in France, Spain, Germany, or Poland.

Proposed unitary character of GIs

The EU GI legislation in force does not refer to GIs as a “unitary” right. However, draft Art. 4(1) of the Proposal to review the EU GI system for wines, spirits and agricultural products provides that EU GIs are to be considered “a unitary and exclusive system”. The notion is not, however, elaborated further in the Proposal.

Under the Proposal, the protection accorded to EU GIs is indeed unitary, similarly to what applies to EU TMs and designs. EU GIs are registered through a single protection procedure. First, an application is examined at the national level (i.e., by a national Ministry of Agriculture).

If accepted, the application is transferred to the European Commission, which examines it at the EU level with the assistance of the EUIPO. If ultimately registered, such GI has an EU-wide effect. For example, producers of the Spanish “Queso Manchego” could act against infringements from Portugal to Hungary.

Yet, no equivalent of EU TM courts for EU GIs is suggested in the Proposal. EU GI rights will still need to be litigated separately in each EU Member State. The upshot: the enforcement of EU GIs is not unitary.

As such, an EU-wide GI right may receive a different scope of protection, depending on the local jurisprudence. Such differences in approach can be seen in the litigation between Italian GI “Gorgonzola” and a German cheese “Cambozola” in the 1990's.

The conflict was litigated separately in Germany (6 U 71/96), Austria (4Ob25/01g), and Denmark (V-112-04). For the German Court, Cambozola was not infringing Gorgonzola. For the Austrian court, Cambozola was infringing, but was protected by a “grandfather clause”, namely it was registered prior to the registration of Gorgonzola as GI. For the Danish court, there was an evocation of Gorgonzola, but such evocation was insufficient to establish infringement.

Indeed, when commenting on the Cambozola saga back in 1997, Ronald Knaak was already warning that the current GI enforcement system leads to market fragmentation. Which makes the Kat wonder: since EU GIs are approximating the treatment of EU TMs at the examination level, might now not also be the right moment to consider a system of EU GI courts?