Dutch can keep Bavaria in Italy, says Luxembourg

The big news of the day is that the Court of Justice of the European Communities has just given its decision in Case C‑343/07, Bavaria NV and Bavaria Italia Srl v Bayerischer Brauerbund eV, a reference for a preliminary ruling from the Corte d’appello di Torino (Italy).

Bayerischer Brauerbund (BB), a German association, has since 1917 had the objective of protecting the common interests of Bavarian brewers and has owned the registered collective trade marks Bayrisch Bier and Bayerisches Bier since 1968. Bavaria, is a Dutch commercial brewer which began to use the word ‘Bavaria’ in 1925. Bavaria owns several trade marks and figurative elements containing the word BAVARIA. The company's Italian subsidiary is Bavaria Italia (BI). The term ‘Bayerisches Bier’ has been covered by bilateral agreements on the protection of geographical indications, appellations of origin and other geographic names between Germany and France, Italy, Greece, Switzerland and Spain.

In 1993 BB submitted to the German Government an application for registration of ‘Bayerisches Bier’ as a protected geographical indication (PGI) under Regulation 2081/92's ‘simplified’ procedure. The German Government then informed the European Commission, which regarded the application as well-founded and submitted a draft regulation seeking the registration of ‘Bayerisches Bier’ as a PGI. After some disagreement the Council adopted Regulation 1347/2001 which registers ‘Bayerisches Bier’ as a PGI. Neither Bavaria anor BI brought any action against Regulation 1347/2001.

Subsequently, following similar proceedings in other Member States, BB tried to stop Bavaria and BI from using their Italian trade mark for BAVARIA, seeking an interlocutory ruling declaring those marks invalid or revoking them, on the ground that they conflicted with the PGI ‘Bayerisches Bier’ or, in any event, because they contained a geographical indication which was generic and misleading, as the beer was Dutch. The Tribunale di Torino allowed this application in part; Bavaria and Bavaria Italia appealed to the Corte d’appello de Torino (Appeal Court, Turin), which stayed the proceedings and referred the following questions to the Court for a preliminary ruling:

"(1) Is Council Regulation ... 1347/2001 … invalid, possibly as a consequence of the invalidity of other acts, in light of the following:

Breach of general principles

– the invalidity of Article 1(1) of Regulation ... 2081/1992, read in conjunction with Annex I thereto, in so far as it permits the registration of geographical indications relating to “beer”, which is an alcoholic beverage listed (wrongly) in that Annex as one of the “foodstuffs” referred to in Article 1(1), but which is not one of the “agricultural products” listed in Annex I to the EC Treaty and referred to in Article 32 (formerly Article 38) and Article 37 (formerly Article 43) thereof, which the Council took as the legal basis for its competence to adopt Regulation ... 2081/1992;

– the invalidity of Article 17 of Regulation ... 2081/1992 in so far as it provides for an accelerated registration procedure under which the rights of interested parties are substantially limited and impaired, in so far as it makes no provision for a right of opposition, in clear breach of the principles of transparency and legal certainty, as is evident in particular from the complexity of the procedure for registering “Bayerisches Bier”, the [PGI] at issue, which took more than seven years from 1994 to 2001, and from the express acknowledgment to that effect in recital 13 in the preamble to Regulation ... 692/2003, Article 15 of which repealed – for those reasons – Article 17 of Regulation ... 2081/1992;

Failure to comply with procedural requirements

– the failure of the indication “Bayerisches Bier” to satisfy the conditions laid down in Article 17 of Regulation 2081/1992 for eligibility for registration in accordance with the simplified procedure provided for therein, in that, at the time when the application for registration was submitted, that indication was not a “legally protected name” in Germany, nor had it been “established by usage” there;

– the fact that the question whether the preconditions had been met for registration of the indication “Bayerisches Bier” was not given due consideration either by the German Government before submitting the application or by the Commission itself after receiving that application, contrary to the requirements established by the case-law of the Court of Justice (Case C‑269/99 Carl Kühne and Others [2001] ECR I‑9517);

– the fact that the application for registration of the indication “Bayerisches Bier” was not submitted in good time by the German Government in accordance with Article 17(1) of Regulation 2081/92 (six months after the date of entry into force of the Regulation, which took place on 24 July 1993), it being also the case that the subject-matter of the application initially submitted by the applicant company envisaged eight varying indications – with a reservation as to the possibility of later variations of an unspecified nature – which did not coalesce to form the current single indication “Bayerisches Bier” until well after the deadline on 24 January 1994;

Failure to comply with substantive requirements

– failure of the indication “Bayerisches Bier” to satisfy the substantive requirements laid down in Article 2(2)(b) of Regulation 2081/1992 for registration as a [PGI], given the generic nature of that indication, which has historically designated beer produced in accordance with a particular method of production which originated during the nineteenth century in Bavaria, whence it spread throughout Europe and the rest of the world (the method known as “the Bavarian method”, based on bottom-fermentation), and which even today in a number of European languages (Danish, Swedish, Finnish) is used as a generic term for beer and which, in any case, can at most identify, solely and generically, from among the numerous varieties of beer in existence any type of “beer produced in the German Land of Bavaria”, there being no “direct link” (Case C‑312/98 Warsteiner Brauerei [2000] ECR I‑9187) between a specific quality, reputation or other characteristic of the product (beer) and its specific geographical origin (Bavaria), nor evidence that this is one of the “exceptional cases” required under Article 2(2)(b) of Regulation ... 2081/1992 in order for it to be permissible to register a geographical indication containing the name of a country;

– the fact that, as emerges from the preceding paragraph, the indication “Bayerisches Bier” is a “generic” indication, and as such ineligible for registration pursuant to Articles 3(1) and 17(2) of Regulation ... 2081/1992;

– the fact that registration of the indication “Bayerisches Bier” should have been refused pursuant to Article 14(3) of Regulation ... 2081/1992, since, in the light of the “reputation and renown” of the Bavaria marks and “the length of time [they have] been used”, registration was “liable to mislead the consumer as to the true identity of the product”?

(2) In the alternative, if Question [1] is held inadmissible or unfounded, should … Regulation 1347/2001 … be construed as meaning that recognition of the [PGI] “Bayerisches Bier” is to have no adverse effects on the validity or usability of pre-existing marks of third parties in which the word “Bavaria” appears"

The Court this morning ruled as follows:

"1. Consideration of the first question asked by the referring court has not disclosed any factor liable to affect the validity of Council Regulation ... 1347/2001 ...

2. Regulation 1347/2001 must be interpreted as having no adverse effects on the validity and the possibility of using, in one of the situations referred to in Article 13 of Council Regulation ... 2081/92 ..., pre-existing trade marks of third parties in which the word ‘Bavaria’ appears and which were registered in good faith before the date on which the application for registration of the protected geographical indication ‘Bayerisches Bier’ was lodged, provided that those marks are not affected by the grounds for invalidity or revocation as provided for by Article 3(1)(c) and (g) and Article 12(2)(b) of First Council Directive 89/104 ... to approximate the laws of the Member States relating to trade marks".

The IPKat isn't surprised at the fate of Question 1, remembering the Court's position in Case C-465/02 Germany v Commission on the failed challenge to the law that clawed the generic term FETA back into Greek hands. He's relieved to see, too, that the investment of many decades in the BAVARIA brand will not have been wasted if BB can't show bad faith in registration.

Bavarian beer here

Oktoberfest here

Effect of beer on cats here