Does a product such as German Balsamico infringe the term “Aceto Balsamico di Modena”, protected as a designation of origin and geographical indication? The General Advocate is in favour of the German Balsamico.
German Balsamico – association with Italian Balsamico di Modena?
In his Opinion, the Advocate General has spoken in favour of German balsamic vinegar. This is the recent stage, for the time being, of years of dispute between the Italian producer group (Consorzio) of products protected as “Aceto Balsamico di Modena” – protected as a designation of origin (g.U.) and geographical indication (g.t.A.) – and Balema GmbH (Germany), which markets products such as German Balsamico.
The products of Balema GmbH are clearly labelled as German products, with the inscription “Theo der vineagar producer, maturation in the wooden barrel, German Balsamico traditional, naturally cloudy from Baden wines”. The Italian Consorzio warned the German manufacturer and Balema GmbH filed a negative declaratory action.
The Karlsruhe Higher Regional Court granted the claim in 2017. The Consorzio Tutela Aceto Balsamico di Modena appealed against this judgment before the BGH (I ZR 253/16), which considers its judgment to be imperatively connected with the interpretation of Article 1 of Regulation (EC) No 583/2009 and has accordingly made a reference to the ECJ for a preliminary ruling.
Protection of the overall designation – also guarantee protection of the non-geographical terms therein?
The Supreme European Court (ECJ) is therefore asked whether the protection conferred by Article 1 of Regulation (EC) No 583/2009 on the collective name “Aceto Balsamico di Modena” extends to the use of the individual non-geographical terms of the compound name (“Aceto”, “Balsamico”, “Aceto Balsamico”).
In his yesterday’s Opinion, the Advocate General has pointed out that the term ‘generic name’ is used with two and essentially different meanings: first, for product names which have become a general name for a product in the Union, even though they refer to the place, region or country in which the product was originally manufactured or marketed (pursuant to Article 2(1) of the EC Treaty). 3(6) of Regulation No 1151/2012), on the other hand, as a term for general or common words which, precisely because of their generic quality, do not satisfy the conditions for registration as a PGI or PDO. (Read more about the geographical EU designations of origin in our article: EU geographical designation: Dresden Christstollen also protected internationally?)
The Advocate General also stated that a compound name entered in the PGI and PDO register may contain generic or otherwise unprotected elements and that the use of that generic element is not an infringement of the protected designation.
“Aceto”, “balsamico” and “Aceto Balsamico”: general words
In the present case, the Advocate General considers that the terms ‘aceto’, ‘balsamico’ and ‘aceto balsamico’ are general words. Only the obvious geographical reference of the word ‘Modena’ evokes an association with ‘Aceto balsamico tradizionale di Modena’, even if it designates other vinegars or spices.
The Advocate General therefore proposes that the general and non-geographical terms like aceto, balsamico and aceto balsamico may be used without infringing the right of “aceto balsamico di Modena” to protection.
Should the European Court of Justice (ECJ) endorse the arguments of the Advocate General, the defendant Balema GmbH could continue to market German Balsamico.
The case also arouses the international interest. The Governments of Germany, Greece and France all took the view that the terms “aceto”, “aceto balsamico” and “balsamico” were generic or non-geographical and that only the generic term “aceto balsamico di Modena” should be protected instead of their individual non-geographical terms. This view was confirmed by yesterday’s Opinion of the Advocate General.
Protected geographical indication – other recent judgments:
- Geographical word mark Swabian Glen Whisky: Glen sounds too Scottish
- Grand Canyon rejected as word mark in Japan
- ECJ: Packaging dispute about Black Forest ham decided
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