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Monday, 7 December 2015

LG Mannheim: there is no German balsamico

Katfriend Valentina Torelli pointed us to an interesting decision from Germany. In a case of a declaratory action of non-infringement brought by the German company Balema against the Consorzio Tutela Aceto Balsamico di Modena, an association of producers of the balsamic vinegar protected by the protected geographic indication (PGI) "Aceto Balsamico di Modena", the Landgericht Mannheim ruled in a decision of 15 September 2015 that balsamic vinegar sold as "Balsamico" must comply with the regulations for the PGI "Aceto Balsamico di Modena".

Balema has been, according to its own undisputed account, producing balsamic vinegar and selling it under the designations "german balsamico" and "aceto balsamico" for over 25 years. It contends that "balsamico" is a generic term for a type of vinegar. It points out that Recital (10) of Regulation EC 583/2009 explicitly states that only the designation "Aceto Balsamico di Modena" is protected, and not the constituent terms "aceto" and "balsamico". In fact, Recital (10) states:

It appears that Germany and Greece did not refer to the entire name, i.e. ‘Aceto Balsamico di Modena’ in their objections regarding the generic nature of the name proposed for registration, but only to some elements of it, namely the words ‘aceto’, ‘balsamico’ and ‘aceto balsamico’, or to translations thereof. However, protection is granted to the term ‘Aceto Balsamico di Modena’ as a whole. Individual non-geographical components of that term may be used, even jointly and also in translation, throughout the Community, provided the principles and rules applicable in the Community’s legal order are respected.

The defendant argued that "aceto balsamico" and "balsamico" were used as abbreviations for "Aceto Balsamico di Modena", and their use had to comply with the regulation for the PGI "Aceto Balsamico di Modena".

In this Kat's view, given Recital (10) Balema could be forgiven for thinking that "balsamico" is a generic term, but the Landgericht Mannheim sided with the Consorzio Tutela Aceto Balsamico di Modena. Recital (10) only meant that the  designation "Aceto Balsamico di Modena" in its entirety was not generic and could be registered as a PGI. It did not say anything about the protection of individual elements of the PGI, and did not indicate that "aceto balsamico" was a generic term. Denying protection for elements of the PGI "Aceto Balsamico di Modena" would contradict art. 13(1) Regulation EC 1151/2012 and the CJEU's case law interpreting said article.

The use of "balsamico" by Balema was an evocation of the PGI "Aceto Balsamico di Modena" in the sense of art. 13(1)(b) Regulation EC 1151/2012. "Evocation" was to be interpreted widely and did not require a likelihood of confusion (with references to the CJEU case law). "Balsamico" was commonly associated with the "original" product complying with the PGI regulation.

The burden of proof that "[aceto] balsamico" was a generic term in the sense of art. 3(6) Regulation EC 1151/2012 lies with Balema. To demonstrate that a term was generic it is insufficient to show that it is understood as a generic term in a specific member state, i.e. Germany. Relevant is the perception of the relevant consumers in the entire territory, or at least a substantial part, of the EU (with reference to T-291/03 - GRANA BIRAGHI). Balema had not even alleged and much less proven such an understanding in (most of) the EU.

I have an inkling that this decision will be appealed, but no further information on the proceedings. If any reader has any information, feel free to post it in the comments.

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