Procedure conferring protection
Section 4 Specific cases
Article 35 Homonyms142
1. A name143 which is homonymous with a protected designation of origin or geographical indication shall be eligible for protection as a designation of origin or geographical indication, provided it is sufficiently differentiated from the protected name so as to ensure that
consumers are not misled as to the true geographical origin of the wines in question.
142 Commission: took note of the concerns of ES + EL, FR, IT, PT that the proposed protection was insufficient. However in response to ES + IT who considered the text should be aligned more closely to that in Article 22a) TRIPs and Article 3(3)a) of Regulation (EC) No 510/2006 so that consumers are not misled into thinking eg that a "Rioja" from Argentina comes from Spain, the Commission considered that the text does correspond to those provisions. IT:
further suggested that the provision should be replaced by "in the case of homonymous marks of origin or geographical indications, recognition may be granted to each of these. The procedures referred to in Article 104 shall be used to determine the practical conditions which by introducing appropriate factors of differentiation, will ensure that the producers concerned receive equitable treatment and that consumers are not misled". Commission: also noted the concerns of EL + FR that in recognising a homonym there was a risk of implicitly recognising a semi generic. FR: considered that the text should therefore also protect the characteristics of the product including a verification procedure; also queried the scrutiny of new GIs which were homonyms and how to deal with part homonyms with names of DOs or GIs. PT considered Article 22(4) TRIPs should be reflected.
143 In response to IT's suggestion to replace "name" with "geographical indication", the Commission recalled that the text was in line with Article 3(3) of Regulation (EC) No 510/2006.
2. Save as otherwise provided for in Commission implementing rules, where a wine grape variety contains or consists of a protected designation of origin or geographical indication the name of the wine grape variety shall not be used for purposes of labelling the products
covered by this Regulation.144
Article 36
Grounds for refusal of protection
1. Names that have become generic shall not be protected as a designation of origin or geographical indication.
For the purposes of this Regulation, a "name that has become generic" means the name of a wine which, although it relates to the place or the region where this product was originally produced or marketed, has become the common name of a wine in the Community145.
To establish whether or not a name has become generic, account shall be taken of all relevant factors, in particular:
(a) the existing situation in the Community, notably in areas of consumption;
(b) the relevant national or Community legal provisions.
144 CZ: asked whether Annex II to Commission Regulation (EC) No 753/2002 would remain in force. EL: suggested that Annex II of that Regulation should be cut down to include on Community produced vine varieties so as to ensure genuine protection of Community producers. Commission: recalled that there was no legal basis for refusing third country varieties from the list. IT: underlined the need to ensure that the status quo on GIs which take the name of varieties and varieties whose reputation is linked to a GI is guaranteed in a declaration; further concerns about confusion between translations which could coincide with the name of GIs.
145 FR: concerns about ensuring protection also for names in candidate countries.
2. A name shall not be protected as a designation of origin or geographical indication where, in the light of a trademark’s reputation and renown146, protection is liable to mislead the
consumer as to the true identity of the wine.
Article 37
Relationship with trademarks
1. Where a designation of origin or a geographical indication is protected under this Regulation, the registration of a trademark corresponding to one of the situations referred to in
Article 38(2) and relating to a product falling under one of the categories listed in Annex IV shall be refused if the application for registration of the trademark is submitted after the date of submission of the application for protection of the designation of origin or geographical indication to the Commission and the designation of origin or geographical indication is subsequently protected. 147
Trademarks registered in breach of the first subparagraph shall be invalidated.
146 In response to IT, the Commission indicated it was up to each MS to decide who was
responsible for assessing "reputation and renown" and on which criteria; referred to Article 6a) of the Paris Convention, Article 8(5) of the Council Regulation (EC) No 40/94 on the Community trademark, as well as the ECJ judgment in the Case 375/97 General
Motors/Yplon as well as to case law of the national courts. IT: scrutiny reserve.
147 IT: need to re-examine Article 37(1) to take account of periods and national procedures specified in Article 31; otherwise it will be impossible in future to recognise new DOs and GIs; the words "to the Commission" should be replaced by "to the Member States". UK:
concerned that the protection of a PGI or PDO from only the date that this is presented to the Commission may lead to speculative application for protection of trademarks which
correspond to a situation referred to at Article 38(2); considered that protection should be granted for a period of time [to be defined] from the time when a PDO or PGI is submitted into the national registration procedure to allow for any appeals and/or subsequent
application for EU protection.
2. Without prejudice to Article 36(2), a trademark the use of which corresponds to one of the situations referred to in Article 38(2), which has been applied for, registered or established by use, if that possibility is provided for by the legislation concerned, in the territory of the Community before the date148 on which the application for protection of the designation of origin or geographical indication is submitted to the Commission, may continue to be used and renewed notwithstanding the protection of a designation of origin or geographical indication, provided that no grounds for the trademark’s invalidity or revocation exist as specified by Council Directive 89/104/EEC149 or Council Regulation (EC) No 40/94150. 151
In such cases the use of the designation of origin or geographical indication shall be permitted alongside the relevant trademarks.
148 IT: queried what protection was provided for the GI/DO during the period between date of its recognition by the MS authorities and the date of application with the Commission; reserves about compatibility with Article 24(3) TRIPs; Commission should establish a list of
trademarks which coincide with GIs and DOs and since when they may be considered valid;
problems of compatibility with third country agreements.
149 OJ L 40, 11.2.1989, p. 1.
150 OJ L 11, 14.1.1994, p. 1.
151 In response to NL, the Commission indicated that it would examine the suggestion to include the provision reflecting Art 24(5)a) TRIPs "the protection of trademarks the use of which corresponds to one of the situations referred to in Art 38(2) which has been applied for, registered, or established by use, if that possibility is provided for by the legislation
concerned, in good faith within the territory of the Community before 1 January 1996" which had already been included in the Regulation soon to be adopted on spirit drinks. In response to FR + EL, IT, CY reserves about both Articles 36 and 37, the Commission explained that the proposal reflected the change in policy towards trademarks. It was also a pragmatic
approach which reflected the reality of the situation where many examples of GIs registered as trademarks can be found in the national trademark registers and which as a consequence would not require a change in the labelling of these products; further took note that those delegations nonetheless considered that this change in policy was not in line with the objectives of the reform nor, IT: with TRIPs. In this context the Commission indicated that the new approach was reasonable; it was very rare for a MS authority to cancel a trademark because of overlap with a GI; that it was compatible with Article 23(2) TRIPs and that there was no reason not to follow the same approach as for Regulation (EC) No 510/2006; further explained in reply to IT that an appeal against the registration for a trademark / GI/DO would need to be made under the procedure governing appeals to the respective matter.