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Court upholds Dutch claim to Bavaria

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

Solving the name problem is the easy bit: but how can I get the top off the bottle?

Fancy a beer? You can ask for a 'Bavaria' and be sure of getting ... a brew of Dutch origins. The decision in Case C-120/08, Bavaria NV v  Bayerischer Brauerbund eV, a reference to the Court of Justice of the European Union for a preliminary from the German Bundesgerichtshof, was posted yesterday on the Curia website.

In short the Brauerbund, "a German association with the objective of protecting the common interests of Bavarian brewers", owns the registered collective trade marks ?Genuine Bavarian Beer? (since 1958), ?Bayrisch Bier? and ?Bayerisches Bier? (since 1968), and ?Reinheitsgebot seit 1516 Bayrisches Bier? (since 1985). Bavaria, a Dutch brewer which trades internationally, began using the word ?Bavaria? in 1925, this word being incorporated into its name in 1930. Bavaria owns several registered trade marks and figurative elements containing the word ?Bavaria?. The registration dates include 1947, 1971, 1982, 1991, 1992 and 1995. Protection in Germany of some of those trade marks was refused in 1973, 1992 and 1993.

?Bayerisches Bier? (the German term for 'Bavarian beer') was covered by bilateral agreements on the protection of indications of provenance, designations of origin and other geographic names between Germany and the French Republic (1961), the Italian Republic (1963), the Hellenic Republic (1964), the Swiss Confederation (1967) and the Kingdom of Spain (1970) -- but not The Netherlands.

In September 1993 the Brauerbund, in agreement with two other Bavarian associations, submitted to the German Government an application for registration of a Protected Geographical Indication (PGI) under Article 17(1) of Regulation No 2081/92. In January 1994 the German Government informed the Commission of the application for registration of ?Bayerisches Bier? as a PGI in accordance with the simplified procedure under that provision.  Following some correspondence, the application was finalised in May 1997 but the final version of the specification wasn't sent to the Commission until March 2000.

The Brauerbund eventually applied to the Landgericht München for an order requiring Bavaria to agree to renounce the protection of its international trade mark, protected in Germany with priority from April 1995 and consisting of the word 'Bavaria'. That court's decision to allow this application was upheld on appeal by the Oberlandesgericht München.  Bavaria's appeal on a point of law to the Bundesgerichtshof was stayed, pending the reference to the Court of Justice of the following questions for a preliminary ruling:

?1. Does Article 14(1) of Regulation ? 510/2006 apply in the case where the protected indication has been validly registered in accordance with the simplified procedure under Article 17 of Regulation ? No 2081/92 ??

2. (a) If the answer to Question 1 is in the affirmative, what date should be taken as the basis for determining the classification in time of the protected geographical indication for the purposes of Article 14(1) of Regulation ? 510/2006?

(b) If the answer to Question 1 is in the negative, what provision governs the conflict between a geographical indication validly registered in accordance with the simplified procedure under Article 17 of Regulation ? 2081/92 and a trade mark, and what determines the classification in time of the protected geographical indication?

3. May the national provisions on the protection of geographical designations be applied in the event that the indication ?Bayerisches Bier? fulfils the conditions for registration under Regulation ? 2081/92 and Regulation ?  510/2006, but Regulation ? 1347/2001 [which registered 'Bayerisches Bier' as a PGI] is invalid??

This reference was itself stayed pending delivery of the judgment in Case C?343/07 Bavaria and Bavaria Italia [in which the Court ruled that Bavaria could keep its Bavaria trade mark in Italy: see IPKat note here]. The Advocate General in this case then gave an Opinion which was fairly pro-Bavaria in its substance [see earlier IPKat note here].  But what would the Court itself say? Now we know:

"Article 14(1) of Council Regulation ... 2081/92 ... is applicable for resolving the conflict between a name validly registered as a protected geographical indication in accordance with the simplified procedure under Article 17 of that regulation and a trade mark corresponding to one of the situations referred to in Article 13 of that regulation relating to the same type of product, the application for registration of which was submitted both before the registration of that name and before the entry into force of Council Regulation ... 692/2003 ... amending Regulation ... 2081/92. The date of the entry into force of the registration of that name constitutes the reference date for the purposes of Article 14(1) of Regulation ... 2081/92.".

The IPKat is delighted with this decision, which he considers to be entirely correct.

See reports in Deutsche Welle here, PR Newswire here

Full post as published by IPKat on December 23, 2010 (boomark / email).