Artisanal "aceto" from... Baden-Württemburg (Source: stuttgarter-zeitung.de)

The CJEU's decision
The CJEU followed the conclusion of the AG and held that the protection for "Aceto Balsamico di Modena" does not extend to the use of the individual non-geographical terms of that name.

The Court recalled the earlier case of Chiciak [C‑129/97 and C‑130/97, here] and noted that individual components that are generic or common terms can never be protected, even in the absence of a limitation, in the registration, of protection to the term as a whole [par. 26].

It then pointed out that the reasons for adoption of a Union act – here, the grant of PGI protection to "Aceto Balsamico di Modena" – must be taken into account when interpreting that act [par. 29]. Thus, it is relevant that Regulation 583/2009 states, in recital (8), that "‘Aceto Balsamico di Modena’ therefore meets the inherent condition for the product having a specific reputation linked to that name". From this, the CJEU inferred that it is (only?) this compound term as a whole that satisfied the condition for registration as a PGI [par. 30].

The CJEU also referred to the objections of Germany and Greece and the clear statement in the granting regulation that protection was only granted for use of the term as a whole [par. 31]. This, it held, meant that it followed "unequivocally" from the granting regulation that the non-geographical terms in the PGI cannot benefit from protection [par. 33].

Lastly, the CJEU referred to its findings in Commission v. Italy [C-193/80, here] where it held that "vinegar" is a generic term; and it held that "balsamico" means "balsamic" and, as such, is a common term denoting vinegar with a bitter-sweet flavour [par. 34]. It also added, following the AG, that the registration of "Aceto balsamico tradizionale di Modena" as a Protected Designation of Origin (PDO)

Comment

This Kat concurs with his colleague Alex, who commented on the AG opinion that it "looks to be legally correct". In Consorzio del Prosciutto di Parma/Asda [C-108/01, here] the CJEU held that the product specification determines "the extent of the right protected against third parties by the effect of registration" [par. 47]. Since the product specification is validated in the granting regulation, it is reasonable to assume that limiting statements in this regulation likewise determine the scope of protection for the PGI.

At the same time, it is worth recalling the CJEU's recent decisions in Glen Buchenbach [C-44/17, here] and Manchego [C-614/17, here].

In Glen Buchenbach, the CJEU held that a geographical indication may be infringed by way of evocation, i.e. using any term that makes the average European consumer directly think of the product whose geographical indication is protected [under Article 16(b) of Regulation 110/2008, which is similar to Article 13(1)(b) of the Agricultural Foodstuff Regulation]. This is even so if no elements of the geographical indication are used, nor any terms that are visually and/or phonetically similar to it. That case concerned the use of "Glen Buchenbach" for a whisky made in Germany. After referral, the national court held that this term infringed the GI for Scotch Whisky [see Katpost here].

Then, in Manchego, the CJEU added that the use of figurative signs invoking the geographical area with which a designation of origin is associated may also constitute evocation under Article 13(1)(b) of the Agricultural Foodstuff Regulation [par. 43, Katpost here].

An open question further to yesterday's decision is whether it leaves open the possibility of evocation in the case of products bearing only the term "aceto balsamico". Presumably the answer is yes, if these terms are accompanied by, say, an image of Modena's splendid Ducal Palace and a logo composed in Modenese dialect [and it can be established that these elements immediately evoke the PGI "Aceto Balsamico di Modena" in the minds of consumers]. One could think of something like "Pèder Pammdòr" ("Father Tomato"), though this Kat is still struggling to grasp the Florentine dialect so he gladly defers to Modenese colleagues on the linguistic correctness of the suggestion. The point is rather that, if it were attempted by Balema's marketeers, they might not be as successful next time around.