“Cognac” as a geographical indication (GI) cannot be used in a trade mark of a spirit drink not covered by that GI, as the commercial use of such a mark would harm the protected indication.

BACKGROUND

Bureau National Interprofessionnel du Cognac v Gust Ranin Oy [2011] Joined Cases C-4/10 and C-27/10 related to a reference from the Finnish Supreme Administrative Court, following registration of two figurative marks including the term “Cognac” and its Finnish translation “Konjakki” for spirit drinks.

In January 2003, Gust Ranin Oy, a Finnish company, registered two figurative marks in the form of bottle labels in respect of “Cognacs and liqueurs containing cognac” in Class 33. Both labels contained the word “cognac” in both English and Finnish.

Under the regulation on the protection of geographical names however, Cognac is a geographical indication protected under French and, since 15 June 1989, EU law, identifying wine spirits originating from France. The Bureau National Interprofessionnel du Cognac (BNIC), a French organisation of Cognac producers, opposed both registrations, but on appeal, both marks were found to be valid. The BNIC appealed to the Supreme Administrative Court, which stayed the proceedings and referred the case to the Court of Justice of the European Union (CJEU) regarding, i) whether Regulation 110/2008 was applicable to the assessment of the validity of the registration of a trade mark containing a GI, where that mark was registered before the Regulation entered into force; and ii) whether Articles 16 and 23 precluded the registration of marks containing GIs, or a generic term referring to that GI and its translation, where that registration did not meet the specifications set for that indication.

DECISION

On the first question, the CJEU held that since those marks contained GIs, Regulation 110/2008/EC on the labelling and protection of GIs of spirit drinks was applicable to the assessment of their validity, notwithstanding that those marks were registered before the Regulation entered into force. The Regulation thus had retrospective effect.

With regard to the second question, the Court said that the fact that Cognac had been protected as a GI since 1989 warranted the application of Article 23 and was sufficient to establish that the contested marks, which had been registered in 2003, could not benefit from the temporary derogation provided for in Article 23(2). Having noted that Cognac had not become generic, according to Article 14(2), the CJEU held that it could not be translated either on the label or in the presentation of a spirit drink. Additionally, Article 16(a), which referred to the direct or indirect commercial use of a GI in respect of products that were not covered by the registration, prohibited the use of a mark containing the term Cognac on comparable products. It was immaterial that there were various categories of “spirit drinks” as these types of drinks, to the relevant public, had common objective characteristics, were consumed on largely identical occasions, distributed through the same channels, and were subject to similar marketing rules.

Furthermore, the CJEU said that the use of the word cognac would offend Article 16(b) as it would evoke, in the mind of the relevant consumer, the products protected by that GI because of the phonetic and visual similarities between the marks (see Consorzio per la tutela del formaggio Gorgonzola [1999] C-87/97 ECR I-1301).

The CJEU thus held that the Finnish authorities must invalidate the registration of the contested marks.