What you see is what you get – Only the entire name “Aceto Balsamico di Modena” protected

What you see is what you get – Only the entire name “Aceto Balsamico di Modena” protected

In its judgment dated 4 December 2019 in case No C-432/18, the Court of Justice of the European Union (CJEU) decided that the protection for the name “Aceto Balsamico di Modena” does not include the use of its individual non-geographical components. The court concurred with the opinion of the CJEU Advocate General (CJEU AG), Gerard Hogan, on 29 July 2019, which stated that the terms “aceto”, “balsamico” and “aceto balsamico” are not covered by the abovementioned Protected Geographical Indication (PGI) (see our article here).

The case is about a conflict between BALEMA GmbH (“BALEMA”), which manufactures vinegar-based products (the labels of which include the names “balsamico” and “Deutscher Balsamico” – “German balsamico”) and markets them in Germany, and Consorzio Tutela Aceto Balsamico di Modena, a consortium of producers of goods labelled “Aceto Balsamico di Modena”. Because the consortium was convinced that BALEMA was infringing the PGI “Aceto Balsamico di Modena”, it sent BALEMA a warning letter. BALEMA’s action for a declaratory judgment that this was not an infringement of trademark was not successful. The subsequent appeal was granted on grounds including that this use does not violate Article 13(1) of Regulation (EU) No 1151/2012 because the PGI protection afforded by Regulation (EC) No 583/2009 only applies to the entire name “Aceto Balsamico di Modena”.

This led the German Federal Court of Justice (FCJ) to suspend the proceedings and refer the following question to the CJEU for a preliminary ruling: Does the protection afforded to the entire name “Aceto Balsamico di Modena” include the use of its individual non-geographical components (“aceto”, “balsamico”, “aceto balsamico”)?

To answer this question, the CJEU first cites Article 1 of Regulation (EC) No 583/2009 in conjunction with its eleventh recital and its Annex I, according to which the name “Aceto Balsamico di Modena (PGI)” is to be entered into the register of protected designations of origin (PDO) and protected geographical indications (PGI) and thus is protected as a whole according to the wording of Article 1. The Court of Justice also refers to its case law, which has established that one component of a “compound” registered name is not necessarily protected if there is no indication in a footnote in the Annex of the relevant Regulation that no application has been made for registration of its components. This is only the case if it is not a generic term or a commonly used term.

According to the CJEU, it is obvious from the special circumstances of the registration of the name “Aceto Balsamico di Modena” as ordered in Regulation (EC) No 583/2009 that the protection afforded to it does not include its non-geographical components. The grounds that led to the enactment of the Regulation (in this case: (EC) No 583/2009) are to be given special consideration. The eighth recital of this Regulation states that the name “Aceto Balsamico di Modena” has an undeniable reputation on the national and international market. In addition, as regards the objections raised by Germany and Greece, the Regulation’s tenth recital states that these Member States did not refer to the entire name but only to some elements of it. The recital continues: “Individual non-geographical components of that term may be used, even jointly and also in translation, throughout the Community, provided the principles and rules applicable in the Community’s legal order are respected.” This means that neither the non-geographical elements of the PGI, i.e. “aceto” and “balsamico”, nor combinations or translations of them fall under the protection of the PGI “Aceto Balsamico di Modena”.

In closing, the CJEU establishes that not only “aceto” (as it had already established) but also “balsamico” (“balsamic”, used to name vinegar with a sweet-sour taste) are generally used terms. As stated by the CJEU GA in his opinion, this conclusion is supported by the registration of the names “Aceto balsamico tradizionale di Modena (PDO)” and “Aceto balsamico tradizionale di Reggio Emilia (PDO)” as ordered in Regulation (EC) No 813/2000. This is because it cannot be assumed that the use of the terms “aceto” and “balsamico” in this PDO and the use of combinations and/or translations of them can be detrimental to the protection of the PGI at issue.