Second time round in Budĕjovický Budvar: GI Regulation reigns supreme

No-one expected Case C-478/07 Budĕjovický Budvar, národní podnik v Rudolf Ammersin GmbH to be laught-a-minute stuff -- and indeed it isn't. This was a second-time-round reference for a preliminary ruling from the Handelsgericht Wien (Austria), in which the Court of Justice of the European Communities was asked to revisit some unfinished business that needed further attention in Case C‑216/01 Budĕjovický Budvar [2003] ECR I‑13617. Essentially, Czech Bud wanted to stop Ammersin importing American Bud from outside the EU into Austria. There was an earlier bilateral agreement between EU Member State Austria and the former (non-EU) Czechoslovakia which, Czech Bud said, entitled it to prevent such imports. The Court, hearing a reference for a preliminary ruling made by the same national court, held then that

* European law did not preclude the application of a provision of a bilateral agreement between a Member State and a non-member country under which a simple and indirect indication of geographical source from that non-member country is accorded protection in the importing Member State, regardless of whether there was any risk of consumers being misled. Accordingly the import of a product lawfully marketed in another Member State may be prevented.

* No such bilateral agreement can prevent importation of goods sold under a name which, in the importing country, does not directly or indirectly refer to the geographical source of the product that it designates, again regardless of whether there is any risk of consumers being misled.

* the court of a Member State can apply the provisions of bilateral agreements, even where those provisions are contrary to the EC Treaty rules, where they concern an obligation resulting from agreements concluded before the date of the accession of that Member State to the European Union.

Second time round, Europe's finest legal brains have been asked to clarify what precisely they meant. Asked the referring court:

"(1) In its judgment in Budĕjovický Budvar the Court of Justice defined the requirements for the compatibility with Article 28 EC of the protection of a designation as a geographical indication which in the country of origin is the name neither of a place nor of a region, namely that such a designation must:

– according to the factual circumstances and

– perceptions prevailing in the Czech Republic, designate a region or a place in that State,

– and that its protection must be justified there on the basis of the criteria laid down in Article 30 EC.

Do those requirements mean:

– that the designation as such must fulfil a specific geographical indication function referring to a particular place or a particular region, or does it suffice that the designation is capable, in conjunction with the product bearing it, of informing consumers that the product bearing it comes from a particular place or a particular region in the country of origin;

– that the three conditions are conditions to be examined separately and to be satisfied cumulatively;

– that a consumer survey is to be carried out for ascertaining perceptions in the country of origin, and, if so, that a low, medium or high degree of recognition and association is required in order for protection to be available;

– that the designation must actually have been used as a geographical indication by several undertakings, and not just one undertaking, in the country of origin and that use as a trade mark by a single undertaking precludes protection?

(2) Does the fact that a designation has not been notified or its registration applied for either within the six-month period provided for in Regulation No 918/2004 or otherwise in terms of Regulation No 510/2006 mean that existing national protection, or in any case protection that has been extended bilaterally to another Member State, becomes void if the designation is a qualified geographical indication, within the meaning of Regulation No 510/2006, under the national law of the State of origin?

(3) Does the fact that, in the context of the Act of Accession … a new Member State, the protection of several qualified geographical indications for a foodstuff has been claimed by that Member State in accordance with Regulation No 510/2006 mean that national protection, or in any case protection that has been extended bilaterally to another Member State, for another designation for the same product may no longer be maintained, and Regulation No 510/2006 [is exhaustive in its effect] to that extent?".

The Court has ruled this morning as follows:

"1. It follows from paragraph 101 of the judgment of 18 November 2003 in Case C‑216/01 Budĕjovický Budvar that:

– in order to determine whether a designation can be considered to constitute a simple and indirect indication of geographical provenance, ... the national court must ascertain whether, according to factual circumstances and perceptions prevailing in the Czech Republic, that designation, even if it is not in itself a geographical name, is at least capable of informing the consumer that the product bearing that indication comes from a particular place or region of that Member State;

– the national court must, in addition, ascertain, once again in the light of factual circumstances and perceptions prevailing in the Czech Republic, whether ... the designation at issue in the main proceedings has not, either at the time of the entry into force of the bilateral instruments at issue in the main proceedings or subsequently, become generic in that Member State, the Court of Justice of the European Communities having already held ... that the aim of the system of protection introduced by those instruments falls within the sphere of the protection of industrial and commercial property ...;

– in the absence of any Community provision in that regard, it is for the national court to decide, in accordance with its own national law, whether a consumer survey should be commissioned for the purpose of clarifying the factual circumstances and perceptions prevailing in the Czech Republic in order to ascertain whether the designation ‘Bud’ at issue in the main proceedings can be classified as a simple and indirect indication of geographical provenance and has not become generic in that Member State. It is also in the light of that national law that the national court, if it finds it necessary to commission a consumer survey, must determine, for the purposes of making the necessary assessments, the percentage of consumers that would be sufficiently significant; and

– Article 30 EC does not lay down specific requirements as to the quality and the duration of the use made of a designation in the Member State of origin for its protection to be justified in the light of that article. Whether such requirements apply in the context of the dispute in the main proceedings must be determined by the national court in the light of the applicable national law, in particular the system of protection laid down by the bilateral instruments at issue in the main proceedings.

2. The Community system of protection laid down ... on the protection of geographical indications and designations of origin for agricultural products and foodstuffs is exhaustive in nature, with the result that that regulation precludes the application of a system of protection laid down by agreements between two Member States, such as the bilateral instruments at issue in the main proceedings, which confers on a designation, which is recognised under the law of a Member State as constituting a designation of origin, protection in another Member State where that protection is actually claimed, despite the fact that no application for registration of that designation of origin has been made in accordance with that regulation".

The IPKat is intrigued at the possibility of a trial court in one Member State ordering the carrying out of a consumer survey in another in order to ascertain consumer perceptions relating to geographical identification and genericity. It appears to him that there is no single approved methodology or standard of proof for such surveys across the European Union. What if, for example, a court in State A orders a survey in State B which fulfils the lower standards of proof in State A than are demanded in State B?

Merpel says, this is scandalous. These proceedings were commenced in Austria in July 1999 and the original interim injunction is now just one month short of its 10th birthday -- and the case still has to be heard by the Handelsgericht Wien. It's not as if we're talking about some amazingly complex issue: this is about crates of beer, bearing the three-letter word BUD, crossing one small border. The system of references of preliminary issues looks great in theory, but stinks in practice.

Shelf-life of beer: how long does it last? Click here and here
Beer smugglers here