France's penalty for the use of green DOT may not conform with EU law - French Supreme Court

 

The Conseil d'Etat (French Supreme Administrative Court) has suspended the texts introducing a penalty for the use of the Green Dot mark in France as of 1 April 2021, following an application for interim measures by several major trade associations and the holder and licensor of the Green Dot mark in the EU.

Among the many measures of law N° 2020-105 of 10 February 2020 aimed at promoting a circular economy (the AGEC Law), France has introduced new product-marking obligations. Specifically, France imposed Triman marking and a harmonised Info-Tri as of 1 January 2022.

Conversely, Article L. 541-10-3 of the French Environment Code in its version linked to the AGEC Law specifically provides that "signs and markings that may lead to confusion as to the sorting or delivery rule for waste from the product" would be subject to a penalty that would at least double the cost of the eco-contribution due for waste management by an eco-organisation. Although the Green Dot was not named, the Minister of Environment's Order of 30 November 2020, which was mandated by this law, describes precisely and solely the Green Dot sign. The penalty for using this sign is set out in the Annex to the Order of 25 December 2020 on the eco-organisations of the household packaging sector. This annex goes into force on 1 April, except for certain packaging exempt from sanctions during the transition period provided for in the order.

On 15 March, the Conseil d’Etat suspended the application of Order of 30 November 2020 and the provisions of the Annex to the Order of 25 December 2020, pending a decision on the merits of their legality.

In the light of the preliminary investigation into the case, the Conseil d’Etat expressed serious doubts about the legality and proportionality of the contested provisions in the light of EU law, and more particularly in light of Article 34 of the TFEU, which prohibits measures having equivalent effect to a quantitative restriction on imports.

In this respect, the Conseil d’Etat noted that, although it is indiscriminately applicable to all products marketed on the French market, whether manufactured in France or imported, the Green Dot penalty makes packaging bearing this sign more expensive. This penalty thus has the object and effect of dissuading producers from using this packaging in France by forcing them to provide different packaging within the EU – the Green Dot being mandatory in Spain and Cyprus – and to organise compartmentalised distribution circuits. The Conseil d'Etat noted that such provisions cannot be regarded as simple sales methods, since the pressure they exert on producers affects the characteristics of the products.

Furthermore, the Council of State considered that the Ministry of Ecological Transition did not provide proof that the disappearance of the Green Dot sign would, on its own, change sorting habits or that any misunderstanding over the meaning of the "Green Dot" could be corrected with less restrictive measures, such as issuing adequate information.

Conseil d'Etat, Ord. Référé, 15 March 2021, n°450160 et 450164, AFISE ao.

Conseil d'Etat, Ord. Référé, 15 March 2021, n°450160 et 450164, Société Der Grüne Punkt Duales System ao.

AUTHORS: Virginie Coursière-Pluntz, Nathalie Pétrignet, Camille Peraudeau [CMS Francis Lefebvre Avocats] 

Clean Meat: sustainability revolution or victim of regulation?

 

When it comes to sustainable food, Clean Meat (i.e In-Vitro or Cultured Meat) is considered by many to be the future. But although Clean Meat is promising in terms of sustainability and new sales markets, the regulatory hurdles that producers and retailers must overcome before entering the EU market are many and varied. This article examines the challenges arising from the European Novel Food Regulation, European GMO law, and the special German requirements for the labelling and advertising of nontraditional meat products. 

A. Products and stage of development 

In the EU, technical marketability of Clean Meat is within reach. Artificially produced chicken meat was recently approved in Singapore. In 2013, a research team from Maastricht University presented its first burger from the lab. While the production costs at that time amounted to EUR 250,000, a clean burger can now be sold for less than USD 10. When they go on sale, costs should decrease even more (in July 2020, a prominent Clean Meat company in the Netherlands announced that its cost of production had fallen by 88%). 

The advantages of Clean Meat are manifold and could outperform conventional meat products on every level: CO2 emissions are reduced, factory farming is not necessary and natural resources are saved. Consuming Clean Meat can also be healthier for the consumer since there is less risk of contaminants (e.g. no antibiotics are used) and the amount of cholesterol is lower. The shift to Clean Meat is a response to increased demand for meat as meat consumption steadily grows, greater sensitivity for animal welfare and the fight against climate change. It is therefore not surprising that there is also strong investment in Clean Meat in the EU. A European Clean Meat start-up attracted investments totalling nearly nine figures. 

B. Regulation on genetically modified food 

When it comes to selling Clean Meat in the EU, the first question to be answered is: Does the food contain genetically modified organisms (GMOs)? If the answer is yes, the food must be authorised by the European Commission. 

In general, it can be said that when it comes to marketing food in the EU, there are hardly any higher hurdles than those set by the GMF Regulation. The approval procedure of the EU Commission is complex and time-consuming. Taking into account the time and effort required for the application (including the performance of studies, etc.), the participation of national authorities, the assessment by the European Food Safety Authority (EFSA) and the approval by the EU Commission, the approval process may be considerably longer than 12 months. In individual cases, approval may take years. 

However, despite the hurdles and required effort, good preparation, professional knowhow and the right partners can bring success. 

C. Novel Food Regulation 

Even though Clean Meat does not contain genetically modified material, it requires approval. This is because in almost all cases Clean Meat qualifies as Novel Food in the sense of the Novel Food Regulation (see statement of the EU Commission). These requirements are slightly less strict than those set down in the genetic engineering law. An approval is granted to a novel food if it does not pose a safety risk to human health, does not mislead consumers and, if it is intended to replace another food, does not differ from it in a way that would cause nutritional disadvantages for individuals when consumed normally. 

Also, in connection with the authorisation of a novel food, the duration of the approval procedure must be taken into account. According to official information, it can take 18 to 24 months for a novel food product to receive final approval (or to be rejected). While this is a long time (especially considering that the products may not be marketed in the EU in the meantime), patience will be rewarded. In the event of approval, the applicant can obtain an exclusive right of use for five years in order to amortise development and application costs. 

A food business operator should not fear having to go through both processes (i.e. GMF Regulation and Novel Food Regulation). If GMO approval is required, Novel Food Regulation approval is not necessary. 

D. Labelling and advertising 

The labelling and advertising of Clean Meat is a national issue. Although European Law (i.e. Food Information Regulation (EU) 1169/2011 [FIR] and Unfair Commercial Practices Directive 2005/29/EC) comprehensively regulates food labelling and advertising law, the question of whether the consumer understands labels and advertising is determined by national standards. The question of how a foodstuff is to be named and how it may be advertised can only be answered in each member state. In the following section, we demonstrate problematic points arising in this context from German standards. 

I. Name of the food 

 According to Art. 17 FIR, pre-packaged foodstuffs must be provided with the name of the food. The name should provide information about the type of food and its special characteristics. In Germany, the guidelines of the German Food Book (Deutsches Lebensmittelbuch) are especially relevant when it comes to the naming of food in accordance with Art. 17 FIR. A non-governmental commission adopted these nonlegislative guidelines, which have no binding effect, but are frequently referred to by authorities and courts when it comes to the question of a food product's correct and non-misleading name. 

Although neither the guidelines for meat nor the guidelines for vegetarian and vegan foods are likely applicable to Clean Meat (since this food does not come from a slaughtered animal or any part of an animal), some conclusions can be drawn from the regulations. According to the guidelines for vegetarian and vegan food, meat-typical terms such as "fillet" and "steak" are not acceptable for non-meat products (i.e. products that do not come from slaughtered animals). The current guidelines seem to reflect that vegetarian products previously had no meat-typical characteristics. This policy, however, may not be sustainable in this form in light of new technical developments. 

Consequently, it will be a challenge to label Clean Meat products with risk-free names, but still accurately describe each product. Each individual case must be examined and it must be determined whether names like "Burger", "Schnitzel" and "Steak" can be applied to Clean Meats. 

II. Advertising 

In the context of advertising, it is particularly important to prevent consumers from being misled about the production method of the respective meat product (i.e. traditional or invitro). For example, it could be problematic if the packaging of a Clean Meat product shows animals in a green landscape. Consumer knowledge about nutritional values and the health advantages (or disadvantages) of Clean Meat vis-à-vis conventional meat will be limited when marketing begins. Hence, precise information will need to be communicated. 

III. Other labelling issues

 Finally, it should be noted that there are special labelling obligations for genetically modified food. For example, labels must explicitly state that the product or parts of it have been genetically modified. 

E. Conclusion 

It cannot be denied that the marketing of Clean Meat faces potential high legal hurdles. Besides the challenges for approvals, issues related to labelling and advertising also persist. However, if these challenges are understood and a product's entry into the market is carefully prepared, these hurdles can be overcome in an economically reasonable way. 

Heike Blank, Jonas Kiefer, CMS Germany

CJEU, C-53/20: the notion of "legitimate interest" for the purposes of opposing non-minor amendments to PGI product specifications

 

The Court of Justice of the European Union (CJEU) issued a preliminary ruling on 15 April 2021 concerning the interpretation of EU Regulation 1151/2012 on quality schemes for agricultural products and foodstuffs. 

The decision issued in case C-53/20 pertains to the standing requirements for opposing a substantial amendment of the product specification of a protected geographical indication (PGI). 

Regulation 1151/2012 updates and merges the rules previously contained in Regulations 509/2006 on traditional specialties guaranteed (TSG) and 510/2006 on protected designations of origin (PDO) and geographical indications (PGI), repealing the two previous regulations. 

The case at hand originates from an application to amend the product specification of a PGI, "Spreewälder Gurken" (gherkins from the Spree Forest, Germany), submitted by Spreewaldverein eV, an association of gherkin producers. The application to amend the specification was filed before the Deutsches Patent und Markenamt (German Patent and Trade Mark Office, DPM). 

Hengstenberg GmbH & Co KG (Hengstenberg), a company operating outside the production area of the PGI in question, sought to act as an interested party to the application for amendment of the specification, because it marketed Spreewälder Gurken PGI products. As such, Hengstenberg filed an opposition against the application before the DPM, which rejected the opposition. 

Hengstenberg appealed the decision of the DPM to the Bundespatentgericht (Federal Patent Court), which dismissed the appeal, finding that Hengstenberg held no "legitimate interest" as required by Regulation 1151/2012 and German national law to oppose the application in question. That notion is central to the opposition procedure, as only a natural or legal person with a “legitimate interest” can lodge a notice of opposition against a non-minor amendment to a product specification. 

The Bundespatentgericht (Federal Patent Court) concluded, in particular, that only producers established in the geographical area of origin are potentially affected by a possible reduction in the value of a PGI, or damage to the reputation of the product concerned, as a result of an amendment to the relevant specification. 

This decision was then appealed before the Bundesgerichtshof (Federal Court of Justice) which, considering that the correct definition of the notion of "legitimate interest" was fundamental to the resolution of the dispute, stayed the proceedings and referred the case to the CJEU for a preliminary ruling pursuant to Article 267 TFEU. 

The question before the CJEU therefore related to the definition of the concept of "legitimate interest", under Article 49(3), first paragraph[1], and Article 49(4), second paragraph[2], of Regulation 1151/2012, read in conjunction with the first paragraph of Article 53(2) thereof[3]. 

In particular, the Bundesgerichtshof asked the Court of Justice whether, in the context of applications for non-minor amendments to the product specification of a product benefiting from a PGI, the "legitimate interest" should be interpreted as referring to any person or entity thatsuffers an economic prejudice - actual or potential, but not entirely implausible - as a result of the requested amendments. 

First of all, the CJEU recalled that by virtue of the express reference set forth in Article 53(2), first paragraph, applications for non-minor amendments to the specification of a product benefiting from a PGI are subject to the same procedure as that applicable to the registration of a new PGI. Thus, the interpretation of the concept of "legitimate interest", which is not defined in the regulation in question, must be identical for both situations. 

The Court then noted that the rules in question all provide that “any natural or legal person” may exercise the right to lodge an opposition and subsequently appeal the decision. Thus, based on a literal interpretation, despite the lack of a definition of “legitimate interest”, there are indications that it should be interpreted broadly. 

The CJEU then noted that even starting from the division of competences that the regulation establishes between the Union and the Member States - which assess applications for registration and oppositions, before submitting a request to the Commission for the registration of protected names - a broad interpretation is preferable, offering the opportunity to as many interested parties as possible to object to significant amendments to the specification. In particular, the Court recalled that one of the grounds for opposition involves the potential to jeopardize the existence of a prior name or trademark or the existence of products legally on the market for at least five years before the date of publication of the registered name and specification. 

The objectives pursued by the regulation - i.e. the creation of quality schemes that contribute to making the quality of products and the methods of production of the same factors that impart a competitive advantage, as well as at the same time avoiding an anti-competitive use of the PGI, PDO and TSG regimes - also lead to the same conclusion. 

Finally, the Court emphasised that it is for the national court to assess, on a case by case basis, whether the “legitimate interest” invoked by the party lodging the opposition is not improbable or hypothetical, in order to balance the need to ensure those with a real interest have the right to oppose non-minor amendments to the product specification with that of avoiding pernicious challenges to changes affecting the specifications. 

Therefore, with this ruling, the CJEU confirmed an expansive interpretation of the legal standing necessary for a party to file an opposition to substantial changes to a PGI product specification, which is protective of the interests of all the stakeholders involved, including those operators that fall outside of the production area of the PGI itself. 

Source: Studio Legale Jacobacci & Associati

______________________________

1 “As part of the scrutiny referred to in the second subparagraph of paragraph 2 of this Article, the Member State shall initiate a national opposition procedure that ensures adequate publication of the application and that provides for a reasonable period within which any natural or legal person having a legitimate interest and established or resident on its territory may lodge an opposition to the application”.

2 “The Member State shall ensure that its favourable decision is made public and that any natural or legal person having a legitimate interest has an opportunity to appeal.”.

3 “Where the amendment involves one or more amendments to the specification that are not minor, the amendment application shall follow the procedure laid down in Articles 49 to 52.”

India: A fight between Bulls and Horses!

Red Bull AG (hereinafter ‘Red Bull’), a wholly owned subsidiary of Red Bull GmbH, is known across the globe for its energy drinks. Red Bull has gained immense popularity in India also. The brand is easily spotted in retail stores for a. its mark ‘RED BULL’,  b. a logo depicting 2 bulls facing one another, c. a whole sun in the background, d. the can of the drink bearing blue and silver trapezoid, resulting in the mark looking like this:  

. Each aspect described above is individually registered under the Trade Marks Act, 1999 in classes, inter alia, 30 and 32. The mark has also gained the status of a ‘well-known mark’ in India, listed here.

 

Red Bull filed a case [CS(COMM) 227/2021] against Bakewell Biscuits Private Limited (hereinafter referred to as ‘Bakewell’) at the Hon’ble High Court of Delhi, on the grounds of trademark infringement and passing off.

Bakewell adopted a mark deceptively similar to 

 and merely replaced the bulls with horses resulting in the mark to look like: 

. Bakewell is allegedly selling ‘Energy candies’ under the above mark. Red Bull, in its plaint, also stated that it has ‘Opposed’ Bakewell’s trademark application bearing no. 4327842.

 

On observing the merits in the case, the Court on May 18, 2021, granted an ex-parte ad-interim injunction against Bakewell retraining them from using the mark 

 or any other mark deceptively similar to Red Bull’s mark. In view of the restrictions issued due to the ongoing pandemic, the Court has currently not issued directions upon the application for Local Commissioner and has kept it pending for the time being.  

To view all formatting for this article (eg, tables, footnotes), please access the original here [RK Dewan & Co].

Where are you from: The EU-China Agreement on Geographical Indications

 

Recently published in the World Trademark Review, Susan Fan uncovers the effects of the EU-China Agreement on Geographical Indications.

Introduction

On 1 March 2021, the AGREEMENT BETWEEN THE GOVERNMENT OF THE PEOPLE'S REPUBLIC OF CHINA AND THE EUROPEAN UNION ON COOPERATION ON, AND PROTECTION OF, GEOGRAPHICAL INDICATIONS (“the EU-China GIs Agreement”) came into effect. The EU-China GIs Agreement protects around 200 iconic European and Chinese goods against imitation and misuse, recognizing 100 Geographical Indications (“GI”) each from the European Union and China, with a second batch to follow that will include an additional 175 GIs each from the EU and China within four years. Now in force, the EU-China GIs Agreement will further strengthen the trade and economic cooperation between the EU and China and benefit consumers and enterprises on both sides. This article will explore what geographical indications are, the effect of the EU-China GIs Agreement and how GIs are obtained and protected.

What are Geographical Indications?

The GI system is a special product quality control system and an intellectual property protection system adopted for famous, excellent, and special products with distinctive regional characteristics. The “origin” refers to the specific geographic region of a particular country where a special product is produced, the geographical features and cultural characteristics of the specific geographic region, such as the water, soil, climate, production history, etc., will directly determine or affect the quality, characteristics, or reputation of the product. Such special product is named after the specific geographic region, such as “Anji White Tea” from China or “Parma Ham” from Europe.

Effect of the EU-China GIs Agreement

Both the EU and China have numerous products that are protectable as GIs. For rights holders from the EU, the entry into force of the EU-China GIs Agreement offers an additional way to protect their specialty products.

For example, “Prosciutto di Parma”, also known as “Parma Ham”, is exclusively reserved to hams produced according to the strict rules defined by the Consorzio’s specifications and based in its place of origin, Parma of Italy. After the EU-China GIs Agreement, in addition to the protection afforded as a Protected Designation of Origin (“PDO”) in the European Community, the genuine Parma Ham shall also receive protection in China under the Agreement as an established GI in the EU.

Accordingly, for those products which do not come from Parma, or those that do not meet the conditions of Parma Ham, but are advertised as “Prosciutto di Parma” or even accompanied by expressions such as “kind", "type", "style", "imitation" or the like[1], seeking recourse afforded to GI in China shall be available, rather than relying solely on making complaints and enforcing rights under the grounds of false advertising or unfair competition.

Similar protection is also offered to rights holders of Chinese specialty products. Using “Anji White Tea” as an example, after its GI is protected in the European market, the GI cannot be used on such teas if they are not produced in accordance with the “Anji White Tea” GI rules. Moreover, the GIs listed in the EU-China GIs Agreement by China not only cover alcoholic beverages, tea, agricultural products, food, etc., but also products with Chinese characteristics, such as rice paper and Shu brocade, which represent traditional Chinese culture. This is the first time that the EU has included such GIs in its agreement. Previously, the EU’s agreements on GIs signed with foreign countries only cover agricultural products, food, and alcoholic beverages. It can be said that products with GIs not only help build unique brands and bring great economic benefits but also play a considerable role in the protection of the traditional cultural heritage of specific geographic regions.

How are GIs Obtained and Protected?

According to the statistics from the China National Intellectual Property Administration (“CNIPA”), in 2020, 10 applications for the protection of GI products were accepted, 6 GI products were approved, 1,052 enterprises were approved for using special marks of GIs, and 765 GI trademarks were approved for registration. As at the end of 2020, a total of 2,391 GI products were approved, 9,479 enterprises were approved for using special marks, and an accumulated number of 6,085 GI trademarks were registered. This means that the awareness and protection of GIs are constantly evolving. In the context of the EU-China GIs Agreement, how exactly can GIs in Europe or China be protected?

In order for a GI to receive protection in other territories, it must already be established. This means that the GI should be formally recognized in its home territory, such as a Protected Designation of Origin or a Protected Geographical Indication (“PGI”) in the EU, or as a recognized GI-protected-product in China.

However, for products that have yet to be recognised as GI products, it is still necessary for them to first obtain official recognition. For a product originating from Europe that wants GI protection but not yet covered by the EU-China GIs Agreement, it needs to apply for the registration of foreign GI with the State Administration for Market Regulation or the competent department of the Ministry of Agriculture in China, or to register the name of the GI as a Collective Trademark/Certification Trademark. In China, there are currently three government departments in charge of the registration and management of GIs. The Trademark Office of the CNIPA is responsible for registering and managing the GIs as Collective Trademarks or Certification Trademarks; the State Administration for Market Regulation and the Ministry of Agriculture are responsible for protecting and managing the GIs registered with them. It is worth mentioning that since the GIs registered with the Trademark Office of the CNIPA have legal status as trademarks, this kind of protection for GI products is much stronger and more easily enforced.

If a name of geographical indication is not a registered GI or protected as a Collective Trademark/Certification Trademark, does the rights holder have any recourse? The answer is “yes”. For example, in the case of Comité Interprofessionnel du Vin de Champagne v. Beijing Sheng Yan Yi Mei Trading Co., Ltd. regarding the infringement of the GI and unfair competition, the soft drink named “Seven Star Red Grape Champagne” sold by Beijing Sheng Yan Yi Mei Trading Co., Ltd. was prominently marked with the words “香槟 (Champagne in Chinese)” and “CHAMPAGNE”. Although at the time of the filing of the lawsuit, “Champagne” had not yet been registered as a GI product or a Collective Trademark/Certification Trademark in China, the court held that whether the GI has been registered as a Collective Trademark or Certification Trademark in China should not be a necessary condition for its legal protection in China. Given that the name “Champagne (香槟)” can serve as an indication of the specific origin of the product, it should be legally protected as a GI on sparkling wines in China. Therefore, the Chinese court supported the Plaintiff’s claim and prohibited the Defendant from using the GI of “Champagne”.

Nevertheless, to avoid the expense of court litigation, the most effective mechanism for protecting products of specific geographic origin would still be the registration system, that is, achieving legal certainty by obtaining recognition of GI products from the Chinese authorities.  In addition, it is possible to further obtain extended protection through the EU-China GIs Agreement. If a GI is not registered in China, it is still possible to gain legal protection, but the evidentiary requirements and the uncertainty will be relatively high. Given the challenges in China, it is advisable for GI owners to adopt a more robust IP protection strategy to seek additional rights.

 Shanghai

sfan@rouse.com

+86 21 23568309

chinaeufoodlawworkingparty@outlook.com

Champagne protection remains strong

 

Introduction

The protection of geographical indications is of great relevance in Europe, especially in France. In the past few decades, the internationalisation of the agrifood and wine markets has increased the importance of IP rights and the preservation of traditional knowledge.

In France, the National Institute of Origin and Quality (INAO) is the public administrative institution responsible for the implementation of French policy regarding official signs of identification of the origin and quality of agricultural and food products.

Nearly half of the 1,100 products protected by an official sign in France are wines.

History of protection for Champagne

Champagne was one of the first wine-growing areas to seek a protected geographical status. On 29 June 1936 it was recognised as a controlled designation of origin (the French equivalent of a protected designation of origin (PDO)). From this date, Champagne houses have been fighting to protect their name and reputation.

The Champagne Committee is the trade association that represents the interests of independent Champagne producers and houses. One of its duties is to protect consumers against misleading claims regarding any wines, beverages or products that trade off Champagne's reputation as an appellation of guaranteed origin and quality. As legal entities, the INAO and the Champagne Committee may bring actions before the courts and prosecute any party which misappropriates the reputation or identity of the Champagne appellation.

Due to Champagne's fame, its unfair use is not confined to the trade of wines and alcoholic beverages, as evidenced by the large number of cases that the Champagne Committee has brought and won, including the following:

• 1984 – against 'Champagne' cigarettes in France;
• 1987 – against Perrier mineral water in Germany;
• 1990 – against 'Schaumpagner' Paris-Night bubble bath in Switzerland;
• 1993 – against 'Champagne' Yves Saint Laurent perfume in France;
• 1994 – against elderflower 'Champagne' in Great Britain; and
• 2002 – against the use of the phrase "Arla: the yoghurt with the taste of Champagne" in Sweden.

CHAMPAWS case

A recent case exemplifies the hard work of the INAO and the Champagne Committee to protect the reputation of the Champagne appellation. On 21 December 2020 the Opposition Division of the EU Intellectual Property Office (EUIPO) rejected the registration of the trademark CHAMPAWS on the grounds that it evoked the PDO Champagne.

Facts

On 4 July 2019 the British company Wood and Brew Ltd, which specialised in the commercialisation of pet beverages, filed the international trademark CHAMPAWS, designating the European Union.

The Champagne Committee and the INAO filed an opposition against the trademark application before the EUIPO, based on the prior PDO Champagne – specifically, on Article 103(2)(b) of EU Regulation 1308/2013/EU, according to which PDOs are protected against misuse, imitation or evocation – and its outstanding reputation and prestige.

Decision

In its decision, the EUIPO pointed out that the concept of 'evocation' covers, among other things, a situation in which the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in their mind is one of the product whose designation is protected.

To characterise the evocation of a registered PDO, it is irrelevant whether the goods are similar or whether a likelihood of confusion may arise. Instead, it is necessary to establish a "sufficiently clear and direct" link between the term used to designate the product and the product whose name is protected.

To evaluate such link, all relevant factors of the case should be considered, including a comparison of the goods and the signs. The EUIPO found that "a certain proximity [could not] be denied" between the wines and the contested goods (ie, beverages for pets and goods under the broader category of foodstuffs for pets, including beverages). The EUIPO found that this link was reinforced by:

• the message which accompanied the marketing of the contested goods, which referred to intrinsic characteristics of Champagne wines (eg, bubbles); and
• the outstanding reputation and prestige of the PDO Champagne.

Further, the signs had the same first six letters, 'champa', which resulted in an overall similarity between them.

The EUIPO also considered the applicant's intention. The EUIPO recognised that the applicant's marketing strategy was built on an evocation between the contested goods and Champagne wines. To promote its goods, the applicant clearly used the images of prestige, luxury, festivities and glamour of Champagne wines, which result not only from the intrinsic reputation of their quality but also from the efforts invested to create them.

Therefore, the EUIPO held that the sign CHAMPAWS was a clear and direct evocation of the PDO Champagne and should be denied protection.

Similar cases

This decision follows an EUIPO Board of Appeal decision which cancelled an EUIPO Opposition Division decision and allowed an opposition filed against an application for the trademark CHAMPAGNOLA, which was also based on the evocation of the PDO Champagne. The EUIPO Opposition Division had rejected the opposition on the grounds that the goods designated by the contested trademark (ie, breads and pastry in Class 30 and bakery services and services related thereto in Class 40) were dissimilar to Champagne (Champagnola/Champagne, 17 April 2020, R 1132/2019-4).

In another current case, the European Court of Justice is expected to issue a ruling concerning the use of Champanillo as a business name for restaurants. Such ruling may consolidate the concept of evocation.

Comment

This case reflects the quasi-absolute protection granted to PDOs by the EUIPO and the offices of member states, particularly where such PDOs enjoy an intrinsic reputation, as is the case with the PDO Champagne.

Anne-Laure Bedaux

GEVERS 

USA - Amazon’s New Compliance Requirements for Dietary Supplement Listings to Ensure Greater Transparency and Quality for Consumers

 

As one of the largest channels facilitating the purchase and sale of dietary supplements, Amazon has often faced criticism for its lack of oversight and failure to take action to restrict the sale of supplements on its platform which are illegal, misbranded, adulterated, or otherwise dangerous for consumers. In response, Amazon recently updated its dietary supplement policy to impose additional obligations on dietary supplement sellers to ensure that products marketed on its platform are safe for consumers and are manufactured and labeled in compliance with Food & Drug Administration (“FDA”) regulations.

While Amazon’s existing policy requires that any dietary supplements listed on its platform conform to certain parameters (for example, no products may be listed which have been identified in an FDA Warning Letter as adulterated or misbranded), the new policy places affirmative reporting obligations on sellers. Specifically, the new policy requires that for each dietary supplement product, manufacturers must submit for Amazon’s approval: (i) either a Certificate of Analysis (COA) from an ISO/EIC 17025 accredited laboratory, a COA from an in-house laboratory that is compliant with current good manufacturing practices (“cGMPs”), or evidence of product enrollment in an Independent Quality Certification Program such as NSF Certified for Sport®, BSCG Certified Drug Free®, or the USP Dietary Supplement Verification Program; and (ii) product images which clearly show the entirety of the product label and contain the name and contact information of the brand owner or manufacturer. The COA requirement applies to finished dietary supplement products, with additional obligations for herbal supplements. For example, for herbal supplements which declare quantified plant constituents on their Supplement Facts panel, COAs must be submitted for each dietary ingredient.

The new policy also requires dietary supplement sellers to provide Amazon with a Letter of Guarantee issued on official brand letterhead providing assurances that (i) the product was manufactured under cGMPs, (ii) only lawful and safe ingredients are utilized in the product, and (iii) the concentration of active ingredients as stated on the label is safe for consumption. These new obligations apply to both new product listings as well as existing products which have already been listed for sale on Amazon, with a compliance deadline of May 31, 2021 for existing product listings. Accordingly, any sellers with existing dietary supplement product listings must submit the required documentation and obtain approval of their listings by May 31, 2021. The stated penalties for failure to provide the newly required information include removal of product listings, suspension of the seller’s ability to add new products or list products, a withholding of payments due to the seller, and/or potential additional legal action.

It is therefore especially critical that dietary supplement brands selling on Amazon are promptly taking steps to comply with the new policy and properly managing their quality obligations to ensure that their products are being manufactured in accordance with cGMPs, and are strongly advised to have detailed agreements in place with manufacturers which clearly spell out their respective quality and compliance responsibilities.

                                                     

"More than a wine label when prestige is at stake"

 By François Willems

Prestigious wineries' trademarks affected by greed

In recent years the market for sale and the value of grands crus wines has increased significantly. For example, the names of Bordeaux wine domains (eg, Château Petrus, Château Latour, Château Lafite-Rothschild, Château Mouton Rothschild and Château Margaux) are among the most prized wines in the world.

As with the art market, speculation on wines attracts counterfeiters who hope to capture some of the huge profits that the resale of such wines generates each year. A common practice of such counterfeiters is to obtain genuine empty bottles and labels of well-known wines and refill them with a mixture of inferior grape juices in the hope of selling them at a high price to gullible buyers.

As well as misleading buyers about the authenticity and origin of wines, this practice undermines the brand prestige of the affected wineries. It diminishes the feeling of scarcity that brand owners who produce only a limited number of hectolitres per vintage skilfully maintain.

Evidently, such counterfeit wines are problematic for Bordeaux domains. However, this is not the only type of brand infringement with which renowned French wineries must deal. Sometimes, simply putting prestigious brands on everyday objects enables counterfeiters to sell their products at a higher price. As a result of the COVID-19 pandemic, face masks are the new canvas for trademark misappropriation (Figure 1).

A recent Belgian court decision addresses free riding on the prestige of a well-known trademark.

Figure 1: example of a mask which misappropriates the PETRUS trademark

Wine labels for unlawful decorative purposes

On 6 January 2021 the Tribunal of First Instance (correctional) of Hainaut, Charleroi division rendered a decision (Petrus v X (19C000951)) regarding infringement of the well-known figurative trademark PETRUS (Figure 2).

Figure 2: PETRUS trademark

Facts

The case concerned the interception of a person in possession of more than 3,000 Château Petrus wine labels at Gosselies Airport, Charleroi. The defendant admitted that the labels were counterfeit. He even stated that he had aged the labels with blackcurrant juice to match the labels' visual appearance to their alleged vintage date. However, he did not consider that he was infringing Petrus's rights because the labels were intended to decorate wine bars and not to be affixed to bottles.

Decision

The Charleroi tribunal replied that the defendant's reasoning was erroneous. As the infringed figurative mark was a reputed trademark, its use could be prohibited even for goods other than those designated (eg, decorative objects). The issue was that the defendant had intended to take undue advantage of the trademark's repute and distinctive power as the labels were acquired with the aim of reselling decorative objects which bore such labels at a high price. The infringement of counterfeiting was therefore established.

With this decision, the Charleroi tribunal reaffirmed that trademark counterfeiting damages the prestige and reputation of the affected trademark. In this case, the counterfeit objects were not sold so Petrus did not suffer any material damage. However, the case may have caused moral damages.

One of the interesting points in this case was the calculation of compensation. The Charleroi tribunal considered that each counterfeit label further damaged the exclusive and rare character of the PETRUS mark. Therefore, the moral damage was compensated with a flat rate of €10 per infringing product.

Comment

Establishing a reputation for a trademark is a long and costly process. When a trademark achieves this status, as in the case of the Bordeaux wineries, its owner can claim a broader protection which extends to goods and services not designated by their trademark registrations. Although the owner of such a renowned trademark obtains wider protection, the downside of such recognition is that such trademarks are more likely to be the target of parasitism and unauthorised use by unscrupulous infringers.

Source: Gevers

"Catalonia High Court of Justice confirms grant of DYNAMIC SANTIVERI trademark" by Paula Gutiérrez

 

On 23 February 2021 the Fifth Section of the Contentious-Administrative Chamber of the Catalonia High Court of Justice (CHCJ) dismissed a contentious-administrative appeal filed by Laboratorios ERN SA, thus confirming the grant of Spanish Trademark 3,717,283, DYNAMIC SANTIVERI.

Facts

Casa Santiveri SL was a company principally dedicated to the production of health food preparations. On 4 May 2018 it applied to register Spanish Trademark 3,717,283, DYNAMIC SANTIVERI (a word mark), for goods in Class 5 of the Nice Classification – specifically, "food supplements based on collagen, hyaluronic acid, vitamins, minerals and plants".

Laboratorios ERN, a manufacturer of pharmaceutical products, filed an opposition against such trademark, alleging that it was prohibited under Article 6(1)(b) of the Trademark Act (17/2001) because it was incompatible with Laboratorios ERN's priority Spanish Trademark 0020,631, DYNAMIN (a mixed mark), which was registered for:

• "specific and chemical products" (under Class 1 of the Nice Classification); and
• "specific and pharmaceutical products, dietetic food products of a medicinal nature in any form of presentation" (under Class 5 of the Nice Classification).

SPTO decision

On 20 November 2018 the Spanish Patent and Trademark Office (SPTO) rejected Laboratorios ERN's opposition and granted the DYNAMIC SANTIVERI trademark, considering that Article 6(1)(b) of the Trademark Act did not apply due to the word differences between the trademarks.

On 11 December 2018 Laboratorios ERN filed an appeal against the SPTO decision. On 10 May 2019 the SPTO dismissed the appeal, thereby confirming the decision.

Laboratorios ERN filed a contentious-administrative appeal before the CHCJ.

CHCJ decision

On 23 February 2021 the CHCJ resolved the dispute by confirming that Article 6(1)(b) of the Trademark Act did not apply to the case.

According to the court, Article 6(1)(b) of the Trademark Act prevents the registration of a trademark where the signs and goods or services are similar to those of a prior trademark (ie, where there is a likelihood of confusion or association).

Based on Supreme Court case law, the court stated that a likelihood of confusion must be analysed by considering:

• the signs' distinctive and dominant elements;
• the signs' identity or similarity;
• the identity of the goods or services;
• the degree of knowledge of the trademark in the market; and
• the association that may be made with the registered sign.

The court also considered EU case law, which states that a comparison must consider the sign as a whole, without excluding the fact that a combined trademark may be dominated by one of its elements.

Accordingly, the court considered that Article 6(1)(b) of the Trademark Act was not applicable for the following reasons:

• Even though the trademark DYNAMIC SANTIVERI was similar to the trademark DYNAMIN in its initial word, the final letter was different.
• The first term, 'dynamic', evoked the Spanish word 'dinámico' (ie, 'dynamic') and appeared as accessory or complementary to the main term of the DYNAMIC SANTIVERI trademark, 'Santiveri', which was sufficiently distinctive with respect to the opposing trademark.
• Although the scope of application of both trademarks was Class 5, the trademark DYNAMIC SANTIVERI had its own overall distinctiveness, enabling both trademarks to coexist in the market with no risk of confusion. Such risk had to be analysed from a rational and logical perspective, considering the public's average level of cultural knowledge.

Therefore, the CHCJ dismissed Laboratorios ERN's appeal, confirming the grant of the DYNAMIC SANTIVERI trademark because sufficient denominative and applicative differences existed between the two trademarks to avoid any likelihood of confusion in the mind of a general consumer.

The plaintiff was ordered to pay the legal costs. This decision is final.

Source: internationallawoffice/com.Newsletters-Intellectual/Property-Spain.Grau-Angulo