Cognac comes off best in spirited attack on Finns

The Cognac zone

Food and drink authorities across the length and breadth of the European Union, and even beyond it, have been stockpiling geographical indications. This legal-gastronomic arms race was bound to produce litigation. So far, much of the recent angry, hostile legal action we've seen has concerned makers of cheeses (Feta, Gorzonzola/Cambozola, Parmigiano Reggiano) and beers (let's lift a glass to Budweiser and Bavaria), not to mention wines (Champagne is a name that trips lightly off the tongue of many a fine adjudicator).

Today it was the turn of spirits, with Joined Cases C-4/10 and C-27/10 Bureau national interprofessionel du Cognac v Gust. Ranin Oy, where the casus belli was another great French duty-free shelf-filler-- Cognac.  Decisions of the Court of Justice of the European Union (ECJ) are often quite dull to read even when the dispute is interesting, but this case has some redeeming features.  First, the judgment is relatively short: although it's 67 paragraphs in length, they're predominantly short ones.  Secondly the ECJ proceeded to judgment without troubling the Advocate General to deliver an opinion, thus minimising the risk of judicial confusion and giving the court's hard-pressed translators an afternoon off in which to sip cocktails on Luxembourg's luxurious sandy beaches.  Thirdly, Curia has provided a short press release, from which this Kat quotes extensively below:

"A trade mark containing the geographical indication ‘Cognac’ cannot be registered to designate a spirit drink not covered by that indication 

The commercial use of such a mark would adversely affect the protected indication 

Under the regulation on the protection of geographical indications for spirit drinks [Regulation 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation 1576/89], it is possible to register as a geographical indication the name of a country, region or locality from which a spirit drink originates, where a given quality, reputation or other characteristic of that drink is essentially attributable to its geographical origin. A registration of that kind is made upon application by the Member State of origin of the drink. The application must be accompanied by a technical file listing the specifications which the drink must meet if it is to be able to be designated by the protected geographical indication. 

Furthermore, the regulation prohibits the registration of trade marks which may adversely affect a protected geographical indication and states that, as a general rule, where such a mark has
already been registered, it must be invalidated [This, as one might imagine, is none too popular with trade mark owners. What makes it even more frustrating for trade mark owners is that a GI, once registered, cannot become generic in legal terms. even though in reality it is]. 

The regulation mentions ‘Cognac’ as a geographical indication identifying wine spirits originating from France. Gust. Ranin Oy, a Finnish company, applied in Finland for the registration, for spirit drinks, of two figurative marks in the form of a bottle label bearing descriptions of the spirit drinks containing the term ‘Cognac’ and its Finnish translation, ‘konjakki’. Although the Finnish authorities have accepted the application for registration, the Bureau national interprofessionel du Cognac – a French organisation of cognac producers – contests the legality of that registration before the Finnish courts. 

The Korkein hallinto-oikeus (Supreme Administrative Court, Finland) asks the Court of Justice whether it is permissible under the regulation to register national trade marks containing the term ‘Cognac’ for products which, in terms of manufacturing method and alcohol content, do not meet the requirements set for the use of the geographical indication ‘Cognac’. 

In its judgment .. the Court states first ... that although the contested marks were registered on 31 January 2003 – that is to say, before the regulation entered into force – that regulation is applicable in the present case. In that connection, the Court observes that the retrospective application of the regulation does not undermine the principle of legal certainty or the principle of the protection of legitimate expectations [because T]he obligation on Member States to prevent the use of a geographical indication identifying spirits for alcoholic beverages which do not originate from the place designated by that indication has existed in EU law since 1 January 1996.

Next, the Court observes that the two Finnish trade marks ... cannot benefit from the derogation provided for under the regulation, in accordance with which the use of a mark which was acquired before the date of protection of the geographical indication in the country of origin (or before 1 January 1996) is permitted, even if it adversely affects the geographical indication concerned. In that regard, the Court points out that, independently of the protection it enjoys under French law, the term ‘Cognac’ has been protected as a geographical indication under EU law since 15 June 1989.

The Court also finds that the use of a mark containing the term ‘Cognac’ for products which are not covered by that indication constitutes a direct commercial use of the protected indication [under Article 16(a) of the Regulation, GIs are protected against "direct or indirect commercial use". The terminology is therefore different to, and broader than, that which governs use in European trade mark legislation]. Such a use is prohibited by the regulation in so far as it concerns comparable products. The Court finds that this may be the position in the case of spirit drinks.

Likewise, the Court finds that the fact that the two Finnish marks incorporate part of the name ‘Cognac’ means that, when the consumer is confronted with the name of the marks on the bottles of spirit drinks not covered by the protected indication, the image triggered in his mind is that of the product whose designation is protected. The Court points out that such ‘evocation’ is also prohibited under the regulation ['evocation' being another term not found in European trade mark law, where resort is had to non-statutory formulations such as whether in the mind of the consumer there exists a "link" or whether a later mark calls to mind an earlier one. The absence of common vocabulary as between GI and trade mark law always offers a potential ground for distinguishing a decision on one from a decision of the other: good news for scholars and litigation lawyers, but it probably doesn't benefit anyone else].

In those circumstances, the Court holds that the Finnish authorities must invalidate the
registration of the contested marks".

It's now up to the Finnish Court to apply this guidance.

The term Cognac is now protected in India here and in China here
Make your own Cognac here
Alcohol, leading cause of death in Finland here