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Trademark Review 2008

The dominant theme this year is the expanding scope of brand owner's ambitions and the limits that may need to be imposed on their expectations that these expanded rights will be enforced by the state on their behalf. The Parmesan case exhibits both these trends. The issues facing ISPs and other platforms for branded goods will be discussed later.

Is that a Trademark on Your Shirt, Sir?

The general opinion in the IP world is that the opinion from the ECJ on 10 April 2008 in the reference C-102/07 from Holland is that it was in adidas favor. The court denied the existence of the German concept of Freihaltebedürfnis. The need to keep a decorative sign free is simply not a relevant factor in the test for infringement. Traders do have the opportunity to use descriptive indications but these do not include purely decorative elements.

The big issue, as always, will be the reaction of the average consumer when seeing the two stripe decorations about which adidas complain. That is something the Dutch court has to decide and they can put it off no longer.

So, here I am watching the Augusta Master's Golf competition two days later.  American Brandt Snedeker  is leading the field and playing in a shirt with three stripes horizontally across his back - far larger than trademarks are usually shown on the BBC. Tiger Woods is playing in horizontal stripes too - but his are decorative aren't they so why not Brandt's? I foresee that there will be stripes in the case  reports for years to come.

The pleasing thing about this reference is that the answer came within 15 months, though the underlying case has been pending for much longer.

UK Trademark Rules 2008

From 1 October 2008 the UK Trademarks Registry will be working to a new set of rules. The main changes are:

The UK IPO website has a basic page referring to the new legislation and is expected to announce workshops to explain the new approach to dispute resolution.

They don't sell Parmesan in my Supermarket

According to the European Commission the word parmesan is protected by the PDO parmigiano reggiano. The 26 February 2008 decision of the ECJ shows that with enough enthusiasm, influence and investment, the perceptions of the public can be changed.

Once upon a time, Parmesan was an archetypal example of a generic term. It is mentioned as such in Article 78 of the First Edition of the Latin American Food Code that was quoted with approval in a 1970 case in the UK High Court. But now the efforts of the Consorzio de Formaggio Parmigiano Reggiano have assured their Italian members of an expansive monopoly in the hard cheese that is flaked and grated over Italian dishes worldwide. In 70's Britain a solid block of Parmesan cheese was unobtainable. Indeed the very concept was surprising as the UK consumer at the time was familiar only with small and expensive quantities of pale yellow but highly flavoured granules of the grated variety. On a trip to Italy I was commissioned to procure some for a friend. We could not find it in Italy but we probably looked in the wrong places - we were on holiday. Eventually a stupendous sum of money was spent in a Parisian market procuring a strangely shaped lump of the cheese. It went back to London and lived for years in a corner of their fridge being grated parsimoniously as only English cooks know how.

The legal lesson of this case is that the protection afforded to PDO and the other types of geographical indication are extremely broad. However the ECJ did decide that other member states were not required to enforce those rights.

Scope of Protection

The parties in this case were the German state and the European Commission. It was not the Consorzio and a producer of illicit Parmesan. The Commission had been lobbied presumably by the Consorzio about sales of Parmesan in Germany and were sufficiently influenced to ask German to enforce the PDO. Germany refused and said the name was generic. The Commission then brought this complaint against Germany herself. Since Germany failed to produce enough evidence of the generic nature of  Parmesan, the ECJ decided that its use infringed the protection afforded by the parmigiano reggiano PDO. They drew attention their earlier case law (Gorgonzola Case C-87/97) that likelihood of confusion was not necessary provided the PDO was evoked. Whether or not Parmesan was a translation was of no relevance.

Another case before the Court of First Instance in September 2007 T-291/03 also gave a PDO a wide scope of protection. In that case the Consorzio responsible for grana padano PDO enjoyed a monopoly in grana and were able to have the grana biraghi trademark cancelled.

Obligation to Enforce

The Regulation governing PDOs contains a system of inspection structures. The ECJ confirmed that it is for the state that sponsors a PDO to monitor compliance. As a result the Consorzio will have to take action against the German vendors of unauthentic Parmesan but the rulings of the ECJ leave them with major problems in establishing a defence to infringement.

Back to the supermarket shelves

What does this mean for the average consumer? It means that I can't find anything called Parmesan in my local Waitrose. There is cheese proudly displaying the European PDO symbol and the words parmigiano reggiano but the shelf stacker couldn't see any Parmesan either. Marks & Spencer are a little more pragmatic. They offer me the "translation" and less high profile billing for the PDO insignia. very tasty it is

Who is this protection for then? According to the ECJ it is capable of protecting the interests of consumers as well as those of the producers. Now that cheese is pre-packed the consumer needs greater protection than I did when I could nibble a sample before I bought it. Nevertheless these decisions suggest that the Consorzio has achieved a massive amount for its producers. Especially when you recall that the European Communities are paying the costs of the case leaving the Consorzio free to produce some amazing advertising Enjoy!

Bye! Feel free to comment!

Brand Backing for Brandt Snedeker

The Filemot Bear tries to read the Parmesan Packet

Filemot Technology Law Ltd
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Copyright 16 August 2008