oriGIn Alerts 28 October 2015: #oriGIn #TPP #GIs&TM

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#oriGIn: Welcome to the “Consorzio di tutela della DOC Prosecco” 

We are pleased to announce that the “Consorzio di tutela della DOC Prosecco” has joined our worldwide network! 

“Prosecco DOC” involves around 8,159 wine estates and 269 sparkling wine producers (with over 300 million bottles produced in 2014). The production area is located in northeast Italy, in the territories of 5 provinces in the Veneto region (Treviso, Venice, Vicenza, Padua, Belluno) and 4 provinces in the region Friuli Venezia Giulia (Gorizia, Pordenone, Trieste and Udine). 

The Consorzio has joined oriGIn to work for a more effective protection of GIs at the international level, in particular with respect to bilateral agreements as well as to trademark applications conflicting with GIs. This confirms an ongoing trend seeing more and more producers’ groups from different countries and sectors joining oriGIn to ensure GIs are fully recognised and effectively protected internationally. 

More information (in Italian) @ http://www.discoverproseccowine.it/uploads/files/file5624f2a4841b4.pdf


#TPP: Negotiations concluded – GIs provisions available 

On 4 October, the U.S., Japan, Australia, Peru, Malaysia, Vietnam, New Zealand, Chile, Singapore, Canada, Mexico and Brunei Darussalam concluded the negotiations of the Trans-Pacific Partnership (TPP). Such plurilateral free trade agreement contains an
Intellectual Property Chapter with a section on GIs (while the final text has not yet been officially released, it is available on WikiLeaks @ https://wikileaks.org/tpp-ip3/WikiLeaks-TPP-IP-Chapter/WikiLeaks-TPP-IP-Chapter-051015.pdf – see Section D, pages 13-17). 

The major points are the following: 

– For the GIs already protected in TPP parties via the international treaties concluded by a TPP Party with another Party or with a non-TPP Party (including the GIs to be protected through agreements agreed in principle), the rules provided by such international
treaties will not be affected by the TPP. As a result, those GIs will be keep the protection based on such rules (see Art. QQ.D.5.6);

– For the GIs to be protected via any international treaty to be concluded by a TPP Party with another Party or with a non-TPP Party, an opposition phase as well as the possibility to ask for the cancellation of such GIs at any time will have to be provided
by the jurisdictions of the TPP Parties (see Art. QQ.D.5, points 1 to 4). Similar provisions will have to apply as well to GIs to be protected within TPP Parties via national recognition procedures (see Art. QQ.D.2 and QQ.D.3). Finally, TPP Parties are
not obliged to apply such provisions to GIs for wines and spirits;

– The principle of coexistence between earlier trademarks and GIs is in principle admitted as a limited exception to the rights conferred to trademarks (see Section C / Trademarks, Art. QQ.C.4);

– While in the GI Chapter there are no provisions concerning the extraterritorial nature of generic terms (genericity remain to be assessed within individual TPP Parties), there are rumors as to the fact that a list of generic terms within TPP jurisdictions
might have been agreed upon in the market access chapter of the Agreement. 

oriGIn will remain vigilant and will study in depth all the implications for the protection of GIs related to the TPP.


#GIs&TMs: Recent rulings concerning TMs applications conflicting with GIs 

Café de Colombia 

On 18 September, the General Court of the EU ruled on case T-387/13 (“Federación Nacional de Cafeteros de Colombia” v. OHMI, the other party to the proceedings before the Board of Appeal of OHIM being Nadine Hélène Jeanne Hautrive) concerning the application for the Community figurative mark “COLOMBIANO HOUSE” for restaurant services (Class 43 in the Nice classification). It also ruled on case T-359/14 (“Federación Nacional de Cafeteros de Colombia” v. OHMI, the other party to the proceedings before the Board of Appeal of OHIM being Accelerate s.a.l., established in Beirut) concerning the invalidity proceedings for the
Community figurative mark “COLOMBIANO COFFEE HOUSE” registered as well for restaurant services. The General Court held that PDO/PGI are protected in the EU not only with respect to trademarks subsequently applied for the same class of products or for comparable products. While not ex officio, trademarks conflicting with a PDO/PGI applied for non-comparable products (including services) should be denied registration if their use exploits the reputation of the PDO/PGI at issue. The Board of Appeal of OHIM will have to reconsider the 2 cases based on these principles, which by the way the same Office had correctly taken into account earlier this year in a similar case concerning the trademark application “Colombueno” (Class 43) also conflicting with the PGI “Café de Colombia”. 

More info @ Press Release 


On 2 October, the General Court issued four judgments related to the community trademark application “Darjeeling” in classes 25, 35 and 38 (related to day and night lingerie). The Tea Board of India had opposed such application before the OHIM based on
two earlier community trademarks covering goods in Class 30. In particular, it argued the likelihood of confusion with such trademarks and the reputation associated with the name “Darjeeling” (Article 8(1) and (5) of the Community Trade Mark Regulation
– CTMR). The OHIM had rejected the opposition. The General Court, on the one hand, found that the OHIM was right in assessing the no-likelihood of confusion. On the other hand, though, it recognized that “Darjeeling” had an outstanding reputation as
a tea of the highest quality and the use of the applied for trademarks would be detrimental to it. As a result, the General Court annulled the above-mentioned OHIM decision with respect to Class 25 as well as to Class 35. 

For more information, see the cases T-624/13, T 625/13, T-626/13 and T-627/13 


In September, the General Court ruled on the community trademark application “BASmALi” in Class 30 (long rice) annulling the decision of the OHIM Board of Appeal, which had rejected the opposition to such application and stated that the name “basmati”
was a generic term. The General Court upheld the claim of the opponent who argued that the name “basmati” is distinctive as it identifies a specific type of rice with a reputation for its quality, fragrance and other properties. The opponent had also
argued that the community trademark application “BASmALi” represented an infringement of Article 8(4) of the CTMR as it had acquired rights over the name “basmati” in accordance with UK law. 

For more information see the case T‑136/14 


In September, following the opposition by the “Consorzio di Tutela della DOC Prosecco”, the application for the Community trademark “T-Secco” (for classes 32 and 33 goods) was rejected. The Consorzio had based its opposition on the collective Community
trademark PROSECCO PDO PROSECCO DOC and on the PDO PROSECCO. The Opposition Division of OHIM upheld the risk of a likelihood of confusion under Article 8(1)(b) of the CTMR, for all the goods that are identical, similar, and similar to a low degree (limited
to class 32 and class 33, while the application for “T-Secco” was also for classes 30 and 43). The earlier PDO PROSECCO was not upheld as a valid ground for the opposition due to insufficient evidence of use of the sign in the course of trade (Art. 8(4)
of the CTMR). Here again unfortunately inconstancies are to be pointed out in the OHIM practice in dealing with trademark applications conflicting with GIs. 

For more details, see the Decision on Opposition No B 2 406 885  

oriGIn – which has been carrying out campaigns on the correct application of the relevant rules on trademark applications conflicting with GIs (see GIs&TM) – will continue in its efforts.


 #Exofficio: a powerful tool for GIs 

Earlier in October, at the Anuga “International Food Exhibition” held in Cologne (Germany), the ex officio protection proved once again to be a very power tool for the enforcement of GIs. 

On the one hand, the “Consorzio di tutela Aceto Balsamico di Modena” referred to the Court of Cologne concerning the presence at the Exhibition of a product commercialized as “Aceto Balzamico” while not corresponding to the PGI product specification.
The Consorzio argued this represents an infringement the PGI “Aceto Balsamico di Modena”. The Court, in line with the views of the Court of Mannheim which last September had ruled that the use of the term “balsamico” for products comparable to the PGI
could represent an evocation, ordered the immediate withdrawal as well as the destruction of the product at issue. On the other hand, the “Consorzio di tutela del formaggio Parmigiano-Reggiano” reported to the German authorities the infringement of the
PDO Parmigiano-Reggiano by cheese products displayed at the Exhibition with designations evoking the PDO, in particular the ones denominated “reggianito”. The German authorities acted promptly and ordered the removal of the products at issue. 

More information @ Press Release Aceto Balsamico di Modena & Press Release Parmigiano-Reggiano 




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