Nexus: geographic indications

[Guest Post] Federal Court in Australia Grants Injunction Restraining Unlawful Use of Scotch Whisky

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Dr Titilayo Adebola, Lecturer in Law at the University of Aberdeen, with research interests in international intellectual property, plant variety protection and geographical indications kindly provides the following update on a recent case involving the enforcement of the Scotch Whisky mark:

On 15 November 2019, a Federal Court in Melbourne, Australia, granted a series of permanent injunctions restraining Rex D’Aquino (principal director, D’Aquino Bros Pty Ltd) and D’Aquino Bros Pty Ltd (Australian based liquor company) from infringing and unlawfully using the Australian certification trade mark for Scotch Whisky. The Scotch Whisky Association(SWA) instituted the Federal Court action following an ABC investigation which revealed D’Aquino Bros Pty Ltd allegedly sold whisky produced in Orange, New South Wales, Australia as Scotch Whisky produced in Scotland, in breach of Australian trade mark law. The brands of contested whisky included “The Black Scot”, “The Clansmen” and “J.B.R Scotch Whisky.” These brands fail to meet the established requirements for Scotch Whisky.

Scotch Whiskyis whisky distilled and matured in oak casks for at least three years in Scotland and bottled at a minimum alcoholic strength of 40 per cent alcohol by volume. There are five categories: single malt, single grain, blended malt, blended grain and blended Scotch Whisky. Scotch Whisky is protected as geographical indications or trade marks in over 100 countries. The flexibility in protection reflects the choice offered in the World Trade Organisation’s (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). TRIPS obliges members of the WTO to provide any legal means to protect origin-based products. Accordingly, while Scotch Whisky is protected in the United Kingdom and European Union as geographical indications in line with the Scotch Whisky Regulations 2009 and Scotch Whisky Technical File respectively, it is protected in Australia as a certification trade mark.

Thirsty work all this lawyering...
Image: anokarina

As demonstrated in the Aquino’s Bros Pty Ltd case, the SWA is actively committed to protecting Scotch Whisky globally [see another recent case here]. Indeed, the SWA has been successful in its mission because Scotch Whisky is not regarded as a generic type of whisky anywhere in the world. This is not the same for some other alcoholic drinks such as Cognac. For example, in the recent Mercosur negotiations between the European Union and Latin American countries, the parties agreed to transition periods that must expire before locally produced ‘Cognacs’ will be phased out and the designation is reserved exclusively for products of France. Conversely, Scotch Whisky is expressly identified as a protected geographical indication without the need for a transition period.

In an interview with the author on the Aquino Bros Pty Ltd case, Mr Alan Park, the SWA’s Director of Legal Affairs concludes that the SWA “is very pleased with the consent orders because the problem products have been removed from the market. The main defendants who were involved have consented to the injunctions from the court or agreed to written settlements to resolve this case.”

CJEU rules that "aceto" and "balsamico" are not individually protectable components of PGI "Aceto Balsamico di Modena"

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Yesterday, the Court of Justice of the EU (CJEU) issued its decision in Case C-432/18, Consorzio Tutela Aceto Balsamico di Modena v Balema GmbH [here]. The decision sets important limitations on the scope of protection of the Protected Geographical Indication (PGI) "Aceto Balsamico di Modena" and for PGI's registered in a similar manner, because the Court held that individual components of this PGI are not protected.

Background to the case

Balema is a German producer of balsamic vinegar and markets its products as "Balsamico" or "Deutscher Balsamico". The consortium of producers of Modena balsamic vinegar hold the PGI for "Aceto Balsamico di Modena (PGI)", which enjoys protection under Regulation 1151/2012 (the Agricultural Foodstuff Regulation). It was registered under its predecessor and, as is common practice for European geographical indications, on the conditions set forth in the granting regulation, 583/2009. The consortium sued Balema in Germany and the Federal Supreme Court asked the CJEU whether the protection for "Aceto Balsamico di Modena" extends to the use of individual, non-geographical components of this term.

It becomes apparent from the granting regulation of the PGI that Germany and Greece objected to the registration of "Aceto Balsamico di Modena" as a PGI because (i) of existing products on the market names "aceto balsamico" and (ii) they considered "aceto" and "balsamico" to be generic terms (recitals (3) and (5)). The granting regulation responds to these objections as follows (recital 10):

It appears that Germany and Greece did not refer to the entire name, i.e. ‘Aceto Balsamico di Modena’ in their objections regarding the generic nature of the name proposed for registration, but only to some elements of it, namely the words ‘aceto’, ‘balsamico’ and ‘aceto balsamico’, or to translations thereof. However, protection is granted to the term ‘Aceto Balsamico di Modena’ as a whole. Individual non-geographical components of that term may be used, even jointly and also in translation, throughout the Community, provided the principles and rules applicable in the Community’s legal order are respected.

Thus, the recital makes clear that protection is only granted to the term "Aceto Balsamico di Modena" as a whole.

In his conclusion, Advocate General (AG) Hogan considered this the most important reason for rejecting the consortium's claims; he also considered the individual components generic within the meaning of article 3(6) of the Agricultural Foodstuff Regulation and therefore ineligible for protection [opinion here; see Katpost here].

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.

Nexus

[Guest Post] Federal Court in Australia Grants Injunction Restraining Unlawful Use of Scotch Whisky

CJEU rules that "aceto" and "balsamico" are not individually protectable components of PGI "Aceto Balsamico di Modena"

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