The ECJ ruled today in the German “gherkin dispute” on opposition proceedings against changes to the specification such as a geographical protected indication. Who has a legitimate interest for opposition proceedings within the meaning of the relevant EU Regulation? Is a popular action possible?
The interest group of the German “Spreewälder Gurken” (Spreewaldverein e. V., Germany) and Hengstenberg (Germany) faced off before the highest European court (ECJ) in the German “gherkin dispute”. The legal issue was the interpretation of Regulation (EU) No 1151/2012 (Art. 53(2), first subparagraph, in conjunction with Art. 49(3), first subparagraph, and (4), second subparagraph) in relation to quality schemes for agricultural products and foodstuffs.
In a nutshell, the key question was: Who has a right of action and opposition proceedings against changes to the specification such as a geographical protected indication?
The designation ‘Spreewälder Gurken’ has been registered as a protected geographical indication for unprocessed and processed vegetables in the Register of protected designations of origin and protected geographical indications since 19 March 1999.
In February 2012, the association of “Spreewälder Gurken” applied for an amendment to the specification at the German Patent and Trade Mark Office. The applicant Hengstenberg filed an opposition against this, but failed so far, most recently before the Federal Patent Court; however, an appeal on points of law was allowed (BPatG 2018, 30 W(pat) 36/15). Thus, the case came before the Federal Court of Justice (BGH), which submitted the term ” legitimate interest ” to the ECJ for interpretation.
Appeal against amendment of the specification: Who has legitimate interest?
According to the BGH, the success of the appeal depends on how the “legitimate interest” in Article 49(3), first subparagraph, and (4), second subparagraph, in conjunction with Article 53(2), first subparagraph, of Regulation (EU) No 1151/2012 is to be interpreted. Can any natural or legal person also rely on it? Or only economic operators who produce comparable products or foodstuffs to those for which a protected geographical indication is registered? And: Are “non-locals” excluded from claiming a legitimate interest from the outset?
Appeal against changes to the specification
In principle, amendments to specifications are possible, but opposition procedures can also be conducted against them. If the proposed amendments are minor, a simplified procedure is carried out in the member state and at Union level (Art. 53(2), second subparagraph, Regulation [EU] No 1151/2012 and Art. 6(2) of Delegated Regulation (EU) No 664/2014); opposition proceedings then do not take place (September 2019, C-785/18)).
In German trade mark law, the requirements of Union law on the participation of persons with a legitimate interest in the procedure for the registration of protected geographical indications as well as in the procedure on applications for non-minor amendments to their specifications are implemented in the Trade Mark Act by the provisions of Sections 130(4), second sentence, and 133, second sentence, in conjunction with Section 132(1) of the Trade Mark Act. Accordingly, any natural or legal person has the right to opposition proceedings against amendments to the specification which are not minor. The prerequisite for this is always a “legitimate interest”.
Union law provides for right of action
This requires an interpretation by the ECJ, the BGH ruled, because Union law sees judicial reviewability as fundamentally necessary also in relation to an act such as an application for amendment of the specification, which is a necessary stage in the procedure for the adoption of a Union measure. A corresponding action would consequently be considered admissible even if the national procedural rules do not provide for this in such a case (see ECJ, Oleificio Borelli v Commission 1992; GRUR Int. 2002, -Carl Kühne [Spreewälder Gurken]).
BGH wants to exclude “actio popularis”
According to the BGH, however, it does not follow from Art. 49(4), second subparagraph, of Regulation (EU) No. 1151/2012 that a Collective action – “actio popularis” – would have to be made possible. This would be the case if any natural or legal person could bring an action against substantial amendments to specifications.
And if “non-locals” were excluded from a right of appeal against changes to the specification, this would also offer the possibility of abuse. For one could then register a geographical indication initially with an elaborate or strict product specification in order to “soften” it later in an amendment procedure, in the context of which non-locals would no longer have the possibility to object.
Therefore, the BGH considers the right approach to be to make opposition proceedings possible only for real competitors within the same group of end consumers – namely competitors within the same group of end consumers, without differentiating between non-locals.
ECJ: genuine economic impact must be present
The ECJ ruled today with a differentiated judgement: although the possibility of bringing an opposition procedure against a non-minor amendment of the specification is in principle available to any natural or legal person, the ECJ ruled – but only if there is a likelihood that this natural or legal person can establish a legitimate interest for a real economic concern. This likelihood of economic interest must be examined by the referring – i.e. national – court.
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Judgement of ECJ, EU:C:2021:279
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