balsamico

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On November 4, 2019, the Court of Justice of the European Union (CJEU) issued its decision regarding a preliminary ruling made by Germany’s Supreme Civil and Criminal Court, stating that article 1 of Regulation 583/2009, under which denominations are registered in the Register of protected geographical indications (the “Regulation“), must be interpreted to be understood that the protection of the designation “Aceto Balsamico di Modena” does not extend to the use of individual non-geographic components of that term.

The CJEU holds that the use of the terms “aceto” and “balsamico” does not imply a breach of the protection afforded to the protected geographical indication “Aceto Balsamico di Modena” (“PGI“).

The main proceedings were started following an injunction brought by the Consorzio Tutela Aceto Balsamico di Modena, a consortium of manufacturers of products bearing the PGI logo, against Balema, a German company that manufactures and markets vinegar-based products using on its labels the term “balsamico,” claiming an alleged violation of the PGI. In response, Balema submitted an action for a negative declaratory judgment regarding its obligation to stop using the term on the labels of its products manufactured in Germany.

After the initial case was found in favor of the claimants, the issue was raised with Germany’s Supreme Civil and Criminal Court, which considered that the resolution of the case should be determined, above all, based on whether the protection of the designation “Aceto Balsamico di Modena” refers only to that designation as a whole or whether it also extends to the use of individual non-geographic components of the term, and it raised the preliminary ruling with the CJEU.

The CJEU started by noting that the designation “Aceto Balsamico di Modena” as a whole is registered and, therefore, protected. The CJEU had previously stated that, even when, in the absence of specific circumstances to the contrary, the protection conferred by the PGI label not only covers the composite name as such but also each of its components; this is only the case if that component is not a common or generic term (see CJEU ruling of June 9, 1998, in cases C-129/97 and C-130/97).

It then went on to note that the designation “Aceto Balsamico di Modena” is the name that has an undeniable reputation both in Italy’s domestic market and abroad, and that, therefore, it is the full composite name that meets the requirement inherent in a specific reputation of the corresponding product, referred to in recital 8 of the Regulation.

Secondly, the CJEU cited recital 10 of the Regulation, which states that protection is granted to the full name and that, in addition, establishes that:

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.”

Therefore, in the opinion of the CJEU, it is unequivocal that the terms “aceto” and “balsamico,” as well as their combination and translations, are not eligible for the protection afforded by the regulations applicable to the disputed PGI label, specifically because the term “aceto” is a common term and the term “balsamico” is an adjective that has no geographical connotation and that, regarding to vinegar, is commonly used to designate a vinegar characterized by a bittersweet taste.

Finally, in line with the conclusions of the advocate general, the existence of registers for the protected designations of origin “Aceto balsamico tradizionale di Modena” and “Aceto balsamico tradizionale,” which coexist with the PGI label, merely confirm the above conclusion.

The CJEU has interpreted the scope of the protection conferred by protected designations of origin and PGI labels in many cases. In a recent case regarding protected designations of origin in Spain (which we reported on in this blog, the CJEU concluded that the use of figurative signs reproducing the figure of Don Quixote, his horse Rocinante and landscapes with windmills, constitutes an evocation of the protected designation of origin “Queso Manchego.” The CJEU considered that the use of figurative elements (e.g., drawings of “Don Quixote” on the label) and the use of signs that relate to a geographical area to which the protected designation of origin is linked (e.g., landscapes and characters of La Mancha) may constitute an evocation of a protected designation of origin.

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