Geography Reference
In-Depth Information
6.73
The OHIM Trade Marks Manual states that an application may only be
registered for the goods protected by a PGI/PDO if it is limited to such goods
originating from the relevant PGI/PDO and says that the following wording
should be used for the limitation: '[name of product] in conformity with the
specifications of the [name PDO/PGI]'.
95
6.74
For 'comparable goods' the OHIM Trade Marks Manual observes that 'such a
limitation is inoperable given that the PGI/PDO specifications only relate to
the goods for which the PGI/PDO protection exists.'
96
6.75
EU case law requires that the provisions of the Community Trade Mark
Regulation which deal with the protection of PGIs and PDOs must be
interpreted as far as possible in conformity with the specific EU legislation on
those subjects and international agreements concluded by the EU, such as the
TRIPS Agreement, as well as with the national laws of Member States.
(b) Case law
i. 'CUVÉE PALOMAR'
Case T-237/08
Abadía Retuerta, SA v OHIM
97
concerned an application for a
Community trade mark for the sign 'CUVÉE PALOMAR' in Class 33 under
the Nice Agreement for wines. The examiner, taking the view that the mark
applied for was inadmissible on the basis of the absolute ground for refusal
referred to in Art 7(1)(j) of Regulation No 40/94, refused the application for
registration by decision of 5 June 2007. The applicant appealed against the
examiner's decision and this appeal was dismissed by the First Board of Appeal
largely on the ground that 'el Palomar' is the name of a local administrative area
in the sub-region Clariano and constitutes, pursuant to the applicable Com-
munity and national law, an area of production protected by the registered
designation of origin 'VALENCIA'.
6.76
6.77
The applicant appealed to the General Court (Third Chamber), which stated
that in order to apply Art 7(1)(j) of Regulation No 40/94 it is necessary to
determine the scope of the concept of 'geographical indication identifying
wines'.
98
In the absence of a definition of the concept of GI identifying wines,
the Court referred to the fourth Recital in the preamble to Regulation No
3288/94, which inserted Art 7(1)(j) into Regulation No 40/94. This states that
'Article 23(2) of the TRIPS Agreement provides for the refusal or invalidation
95
OHIM Trade Marks Manual at 44.
96
Ibid.
97
Judgment 11 May 2010.
98
Ibid, para 60
