Geography Reference
In-Depth Information
(c) Signs which are evocative of a PGI/PDO
The OHIM Trade Marks Manual provides than a Community trade mark
application which contains or consists of a term or a sign which is 'evocative' of
the PGI/PDO should also be refused, which covers the situation where the
term used to designate the product incorporates part of a protected designation,
so that when the consumer is confronted with the name of the product, the
image triggered in his mind is that of the product whose designation is
protected. 107 It provides the example of 'PRO SECKO' for wine as evocative of
the Italian PDO 'PROSECCO' 108 stating that
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the question is whether the elements (visual, phonetic and conceptual) that the trade
mark and the PGI/PDO have in common, and the proximity between the products, are
such as to trigger associations ('the image') of the product bearing the protected name in
the mind of the relevant public when encountering the trade mark applied for. 109
6.80
The OHIM Trade Marks Manual points out that an objection based on Art
7(1)(j) of the Community Trade Mark Regulation also arises in the case of
applications which contain or evoke a constituent part of a PGI/PDO. It
provides the example of the PGI 'COTEAUX DU PONT DU GARD' which
would be evoked by a Community trade mark application which contains or
evokes 'PONT DU GARD'. 110
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However, the OHIM Trade Marks Manual warns that it is important to
distinguish between parts of a PGI/PDO with geographical significance and
other parts with only a generic or non-geographical significance (such as 'vin' or
'vallé'). Whether a term is generic or non-geographical needs to be determined
on the basis of the understanding in the Member State in which the GI has its
origin. Thus in the case of Italian PGIs/PDOs the Italian-speaker's view is the
relevant one, suggesting that in the case of 'ASTI SPUMANTE', only 'Asti' is
geographically significant since 'spumante' is a generic term meaning 'spar-
kling'.
(d) Identical and comparable products
This absolute ground for refusal applies not only where the Community trade
mark application and the PGI/PDO cover identical goods, but also where the
application covers 'comparable products' to those protected under the PGI/
PDO. The ECJ provided some guidance on comparable products in Joined
6.82
107
Ibid, citing judgment of 04/03/1999, C-87/97, 'CAMBOZOLA', [1999] ECR I-1301 at para 25; and
judgment of 26/02/2008, C-132/05, 'PARMESAN'.
108
OHIM Trade Marks Manual at 44.
109
Ibid.
110
Ibid.
 
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