Geography Reference
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ensure the protection of PDOs registered under Regulation 2081/92. It also
ruled that it was for the national court to decide whether, on the facts, the
conditions laid down in Art 14(2) of Regulation 2081/92 allow use of an earlier
trade mark to continue notwithstanding the registration of the PDO 'GOR-
GONZOLA', having regard in particular to the law in force at the time of
registration of the trade mark, in order to determine whether such registration
could have been made in good faith.
(b) 'GRANA BIRAGHI' and GRANA PADANO'.
Case T-291/03
131
concerned an application filed at OHIM on 2 February 1998
by Biraghi SpA for registration of the word mark 'GRANA BIRAGHI' as a
Community trade mark for cheeses. The Consorzio per la tutela del formaggio
Grana Padano filed an application with OHIM for a declaration that the
Community trade mark was invalid as contrary to the protection of the PDO
'GRANA PADANO' registered under Regulation 2081/92 and, relying on the
registration of the earlier national and international marks 'GRANA' and
'GRANA PADANO'. The Cancellation Division of OHIM allowed an appli-
cation for a declaration of invalidity under Art 14 of Regulation No 2081/92.
Biraghi appealed against that decision on the grounds of the generic and
descriptive nature of the term 'grana'. The First Board of Appeal allowed the
appeal, annulling the Cancellation Division's decision and rejecting the appli-
cation for a declaration that the Community trade mark 'GRANA BIRAGHI'
was invalid. The Board of Appeal found that the word 'grana' was generic and
described an essential quality of the goods in question. Therefore, according to
the Board of Appeal decision, the existence of the PDO 'GRANA PADANO'
did not preclude the registration of the sign 'GRANA BIRAGHI' as a
Community trade mark.
3.196
3.197
One of the issues which was addressed by the Court of First Instance of the
European Communities on appeal was whether the term 'grana' designated a
geographical area as such. The Court noted that a PDO may also be constituted
by a traditional non-geographical name designating a foodstuff originating in a
region or specific place which presents homogeneous natural factors which
distinguish it from the areas adjoining it and that in that regard, it was not
disputed that 'grana' cheese originates in the region of the plain of the Po and
thus met the conditions provided for in Art 2(3) of Regulation No 2081/92.
132
131
Consorzio per la tutela del formaggio Grana Padano v OHIM
[2007] ECR II-3081.
132
Ibid, at para 81.
