03 September, 2019

The One and Only - Advocate General Hogan Considers the Limits of Protected Geographical Indicators and their Individual Terms

Protected Geographical Indicators (or PGIs for short) are a crucial part of being able to identify local goods that have a particular quality and/or manufacturing methods that are unique to a particular region of the EU. Seeing a PGI in packaging can guarantee that the goods you're buying are legitimate, whether it is looking for that special something in Bolognian Mortadella or Gruyère cheese, it is key to distinguishing the 'real stuff' from the pretenders. Even so, sometimes the PGIs can become almost generic or the terminology used within it separated to hint at the PGI without actually containing the whole term. That being said, where does one draw the line when naming products similarly to PGIs? Luckily, the CJEU is slated to decide this question, and Advocate General Hogan gave their thoughts on this earlier this summer.

The case of Consorzio Tutela Aceto Balsamico di Modena v BALEMA GmbH concerned balsamic vinegar from the region of Modena – "Aceto Balsamico di Modena" (PGI application here). The product is an aged, flavoured vinegar made from grapes. The name does contain the word 'balsam', which has colloquially become to mean the same product, but historically it was used to denote a balm or a product with healing properties. Balema produce a German 'balsamic vinegar' called "Balsamico" made from Baden wine. Consorzio Tutela Aceto Balsamico di Modena, a consortium of producers of Modena balsamic vinegar, took Balema to court for the infringement of their PGI. Balema challenged this, with the CJEU left to decide whether the individual word components of the PGI could be protected as PGIs within the registration, or would be free to be used by others in isolation from the whole PGI as they were generic terms..

The AG started off with defining what amounted to a 'generic term'. Under Article Article 3(6) of Regulation No 1151/2012, a generic term is defined as "…the names of products which, although relating to the place, region or country where the product was originally produced or marketed, have become the common name of a product in the Union". This means that the PGI has become generic and no longer denotes the quality and characteristics that one would expect from that PGI. This also includes words that have always been generic, even if included within the PGI.

Ptahhotep was no fool when it came to new types of balms
(Source: AHRECS)
The AG added that, in order to determine whether a term has become generic, what is decisive is "…not necessarily whether a term has a particular meaning in a given language but rather whether it lacks a current geographical connotation". The same applies to terms that could be considered as being generic (i.e. mean something specific in one language), but do still retain their geographical connotation, therefore potentially avoiding becoming generic. Adding onto this, even if in one Member State the term is considered to be generic, it does not mean the term has become generic for the whole of the EU.

The specific test courts would have to apply is whether "…the manner in which these words would be perceived by the ‘average consumer who is reasonably well informed and reasonably observant and circumspect", i.e. does the average person consider the term generic or not.

The AG then moved onto considering the interpretation of Article 1 of Regulation No 583/2009 which denotes the registration of the specific PGI. The Regulation didn't provide any limitations or qualifications for the registration of the term 'Aceto Balsamico di Modena', or whether its components themselves would be generic or non-geographical terms separately from the PGI. The AG does point out that previous decisions have indicated that this does not mean that the terms would be protected individually as well as within the whole PGI.

In the light of the Regulation, the AG considered that the terms ‘Aceto’, ‘Aceto Balsamico’ and ‘Balsamico’ were generic terms, and protection was only afforded to the whole PGI. This was due to the common nature of the words, and the particular emphasis made by the Regulation on the entirety of the term.

The opinion is very interesting, albeit unsurprising, as the monopolization of 'common' words (even if used less these days) would be detrimental to the wider internal market. The protection of region specific goods is important, but this also needs to be balanced with the allowance for the use of words that describe goods, rather than their specific geographical origin. It remains to be seen if the CJEU agree with the AG, but this writer for one thinks they'll agree.