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Let’s take a trip within the European Union to explore some of its best regional specialties which often enjoy a strong reputation worldwide: spirit drinks!

Brandies, wine spirits, vodka, whisky… The European Union (EU) seems to have as many types of spirit drinks as it has traditions and cultural heritages.

As well as some food products (Gorgonzola, Parmigiano-Reggiano, Feta, Roquefort) or other alcoholic beverages (Champagne, Bordeaux, Cava), these spirit drinks may beneficiate from geographical indications (GI) if they are produced in a specific protected area and according to conditions defined in a specification.

Without doubt, you may have heard about some of them – “Scotch Whisky”, “Cognac”, “Ron de Granada”, “Plymouth Gin”, “Irish Cream”, “Polish Vodka”, “Brandy de Jerez”. Only their names are synonymous with quality products, originating from a specific territory or country.

Indeed, these products beneficiate from an international reputation and their production constitutes a major source of growth and jobs in Europe. Therefore, the EU regulation of the spirit drinks sector aims to contribute to a high level of consumer protection, the prevention of deceptive practices and market transparency and fair competition.

During our journey, we invite you to discover the different degrees of protection of the GIs of spirit drinks, through concrete examples and case law illustrations.

But before departure, what exactly is a GI of spirit drinks? The Regulation (EC) No. 110/2008 of the European parliament and of the Council of 15 January 2008 defines GIs of spirit as “an indication which identifies a spirit drink as originating in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of that spirit drink is essentially attributable to its geographical origin”. They are registered in the Annex III of this Regulation.

According to article 16 of this Regulation, GIs of spirit drinks are protected against:

(a) any direct or indirect commercial use in respect of products not covered by the registration in so far as those products are comparable to the spirit drink registered under that geographical indication or insofar as such use exploits the reputation of the registered geographical indication;

(b) any misuse, imitation or evocation, even if the true origin of the product is indicated or the geographical indication is used in translation or accompanied by an expression such as ‘like’, ‘type’, ‘style’, ‘made’, ‘flavour’ or any other similar term;

(c) any other false or misleading indication as to the provenance, origin, nature or essential qualities on the description, presentation or labelling of the product, liable to convey a false impression as to its origin;

(d) any other practice liable to mislead the consumer as to the true origin of the product.”

In the first stopover of our journey, we focus on point 16.a) of this Regulation (paragraph in bold above).

This provision constitutes the most obvious stage of protection: it prevents the use of the GI both for comparable products not covered by the GI, and not comparable products insofar as such use exploits the reputation of the denomination.

The word “use” in that provision requires, by definition, that the sign at issue makes use of the GI in a form that is either identical to that indication or phonetically and/or visually highly similar to it, making it clearly indissociable from the GI.

In that regard, the Court has already held that the use of a trade mark containing a GI, or a term corresponding to that indication and its translation, with respect to spirit drinks which do not meet the relevant specifications, constitutes, in principle, a direct commercial use of that geographical indication.

Hereinafter, you can see examples of commercial uses of the GI “Cognac” covered by provision 16.a) of this Regulation No. 110/2008:

It is interesting to note that the prohibited commercial use can be direct, implying that the GI is affixed directly to the product concerned or its packaging, or indirect, covering the indication to feature in supplementary marketing or information sources, such as an advertisement for that product or documents relating to it.

However, an “indirect use” should not be understood as covering cases of evocation of GIs.

Accordingly, whether in a case of direct or indirect use, it is not sufficient that the sign in question is liable to evoke in the relevant public some kind of association with the GI concerned or the geographical area relating thereto (Case C‑44/17 Judgment of the Court of Justice of the European Union (Fifth Chamber) of 7 June 2018).

In the following of our journey, we will see that this accentuated angle of protection is provided for in the other paragraphs of article 16, i.e. b), c) and d).

During this first stopover, we introduced you with the first level of protection and we invite you to keep travelling with us to understand how far protection of GIs for drinks spirits can go.

 

Annabella BIFFI and Marion ALARY – Intellectual property lawyers at INLEX IP EXPERTISE – LEXWINE Department.

 

 

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