Geography Reference
In-Depth Information
indication should be that of the date of application of the trade mark for
registration in the Union or in the Member States and the date of application
for protection of a designation of origin or a geographical indication to the
Commission.
3.186
Recital (54) proposes that the provisions dealing with the refusal or coexistence
of a designation of origin or a geographical indication on the ground of conflict
with a prior trade mark should continue to apply.
3.187
Recital (55) indicates that the criteria by which subsequent trade marks should
be refused or, if registered, invalidated on the ground that they conflict with a
prior designation of origin or geographical indication should correspond to the
scope of protection of designation of origin or a geographical indication laid
down.
1. Legislation
3.188
Article 14 deals with the problems arising when a trade mark that includes a
geographical name clashes with a PDO or a PGI.
3.189
The simplest case of conflict, which is dealt with in Art 14(1) of the Regulation,
provides that where a PDO or a PGI is registered under the Regulation, the
application for registration of a trade mark corresponding to one of the
situations referred to in Art 13 and relating to the same class of product shall be
refused if the application for registration of the trademark is submitted after the
date of submission of the registration application to the Commission. In this
case, Regulation 14(1) gives priority to the geographical name as it provides
that trade marks 'registered in breach of Article 14(1) shall be invalidated'.
3.190
Article 14(1) provides that the provisions of this paragraph shall apply notwith-
standing the provisions of the Trade Marks Directive.
126
3.191
The second case, referred to in Art 14(2), provides for coexistence in certain
cases. A conflicting trade mark can only continue to be used if, with due regard
to Community law:
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the trade mark was applied for, registered or established by use in good
faith before the date of protection in the country of origin or the date of
126
First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States
relating to trade marks, OJ L 40, 11.2.1989, p. 1.
