The Legal 500

Twitter Logo Youtube Circle Icon LinkedIn Icon

GRP Rainer LLP

AUGUSTINERSTRAĂźE 10, 50667 COLOGNE, GERMANY
Tel:
Work +49 221 272 27 50
Fax:
Fax +49 221 272 27 52 4
Email:
Web:
www.grprainer.com
Berlin, Bonn, Cologne, Dusseldorf, Frankfurt, Hamburg and 3 more

Show all Press releases

CJEU on protected designations of origin

May 2018

As in the case of brands, geographical designations of origin can be protected as well. It is therefore also possible for advertising featuring references to origin to be misleading to consumers and thus impermissible.

Brands and geographical designations of origin are of great value to businesses. They give rise to certain associations among consumers, e.g. in relation to the quality of a product. We at the commercial law firm GRP Rainer Rechtsanwälte note that for this reason the protection of brands and designations of origin is all the more important.

Having said that, a ruling of the Court of Justice of the European Union (CJEU) from December 20, 2017 demonstrates that the protection afforded to designations of origin can have its limits (Az.: C-393/16). The case before the CJEU concerned a legal dispute between a discount supermarket and an association of champagne producers. The discount supermarket offered ice cream under the name “Champagner Sorbet” (champagne sorbet). The association brought a legal action against this, arguing that it constituted a violation of the protected designation of origin (PDO) “champagne”.

The case ended up before the Bundesgerichtshof (BGH), Germany’s Federal Supreme Court, which in turn requested that the CJEU interpret EU legislation pertaining to the protection of registered designations of origin.

The CJEU held that a protected designation of origin has been exploited improperly if the intention behind using the designation is to unduly benefit from its reputation. According to the Court, the designation “Champagner Sorbet” was able to benefit from the prestige of the protected designation of origin “champagne” because consumers associate the latter with a certain class of goods and price range. Notwithstanding this, use of the designation was said not to be illegal if an essential quality of the product is its predominantly champagne flavour, a matter which the CJEU concluded was for the BGH to address.

However, unlawful use might have occurred in the case of a sorbet that, despite the impression given by references in its design or outer packaging, does not include a champagne flavour as one of its essential qualities. References of this kind could be deemed incorrect and misleading. The Court ruled that the protection afforded to registered designations of origin extends beyond the origin of the product in question to incorrect or misleading references pertaining to its nature or essential qualities.

Violations of trademark law or copyright law can be met with severe penalties. Lawyers who are experienced in the field of intellectual property law can advise businesses on enforcing or fending off claims.

https://www.grprainer.com/en/legal-advice/intellectual-property-law-and-trademark-law/trademark-law.html

Legal Developments by:
GRP Rainer LLP

Legal Developments in Germany

Legal Developments and updates from the leading lawyers in each jurisdiction. To contribute, send an email request to
  • LAG DĂĽsseldorf: Dismissal with immediate effect valid in response to threat

    Anyone who seriously threatens their employer or superior should expect to be dismissed with immediate effect. This was confirmed by a ruling of the Landesarbeitsgericht (LAG) DĂĽsseldorf [Regional Labour Court of DĂĽsseldorf] from June 8, 2017 (Az.: 11 Sa 823/16).
  • Tax evasion: Only voluntary disclosure affords protection from severe penalties

    Anyone who has been caught for tax evasion should expect to be faced with severe penalties. Voluntary disclosure is the only way of returning to a state of normal tax affairs and avoiding penalties.
  • GSK Update: AIFM Marketing in Germany - The clock is ticking for U.S. and other non-EU fund managers

    Our GSK Update informs about the impact of recent German investment fund legislation (UCITS V Implementation Act) for AIF managers, who are not domiciled in the EU (“non-EU-AIFM”) and who seek to market AIF shares in Germany in accordance with applicable German investment fund law under the EU-AIFM Directive (2011/61/EU).
  • GSK expands Luxembourg presence with a new tax partner

    Opened at the beginning of March 2016, GSK Stockmann + Kollegen continues to expand its Luxembourg office. Mathilde Ostertag recently joined the Luxembourg team of Equity Partners Dr. Marcus Peter, Andreas Heinzmann and Dr. Philipp Mößner as Local Tax Partner.
  • EIA - Strengthening the role of the public

    Among other things, the recent amendment to the Environmental Impact Assessment Act has broadened the rights of (what is termed) the "affected public". The affected public consists primarily of various citizens' initiatives pursuing environmental or public-health purposes. It may for instance file an appeal against a negative decision at the screening stage (i.e., a decision according to which the given project does not require the issuance of an EIA report), and seek its annulment in court. The affected public has been granted a stronger voice also in subsequent procedures in which the fate of a building project is being decided: zoning proceedings and the proceedings on the issuance of a building permit. Taken together, these legislative changes may make it more difficult to implement projects which require an EIA report; in particular, the length of permission proceedings may be substantially extended.
  • New Top Level Domains – Noerr expert warns against trademark infringements

    On June 13, the Internet Corporation for Assigned Names and Numbers (ICANN) published the names of those who have applied for a new top level domain the ending of which may be geographic, such as "munich", industry identification such as "insurance" and even all trademark names and company descriptions such as "canon" and "adidas".
    - Noerr
  • No obligation to set up filtering systems in order to prevent copyright violations

    ECJ, decision of February 16th, 2012, ref. C-360/10 – SABAM
  • Further ECJ Ruling concerning NGO’s right of action under German environmental law

    For the second time within a short period of time, the non-governmental organisations right to challenge administrative decisions under German law is going to be subject to the jurisdiction of the European Court of Justice (ECJ). In January 2012, the German Supreme Administrative Court (Bundesverwaltungsgericht) referred a case to the ECJ for a preliminary ruling concerning the NGO’s right of action.
  • Lessons in Cross-Border M & A Transactions

    The fundamental advice for international business transactions is obvious and easy to understand: different countries have different laws, business habits and cultures. These differences may range from minor nuances, such as lengthy French business lunches or unusual Spanish office hours, to significant legal roadblocks, such as strict European employment laws.
  • Priority rental rights in insolvency

    Parties to rental contracts for commercial premises often agree priority rental rights. In practice, this concept is used to cover a whole series of legal structures. These range from fixed options for the tenant to a promise made by the landlord as a business policy that if any additional premises become available, they will be offered to the tenant. In 2010 the Berlin Court of Appeal issued a ruling on such priority rental rights in insolvency; the decision has recently been published.