How much protection for Aceto Balsamico di Modena?

In the opinion delivered on 29 July 2019 in case C-432/18 pending before the Court of Justice of the European Union (CJEU), the EU Advocate General Gerard William Hogan considered the question of the extent of the protection offered by the protected geographical indication ‘Aceto Balsamico di Modena’. His conclusion was that protection of the entire name ‘Aceto Balsamico di Modena’ does not extend to the use of the terms ‘Aceto’, ‘Balsamico’ and ‘Aceto Balsamico’.

‘Aceto Balsamico di Modena’ was entered in the register of protected designations of origin (PDO) and protected geographical indications (Aceto Balsamico di Modena (PGI)) by Regulation (EC) No 583/2009 of the Commission of 3 July 2009. Regulation (EC) No 583/2009 was adopted on the basis of Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, which was repealed by Article 58(1) of Regulation (EU) No 1151/2012.

Article 3(6) of Regulation (EU) No 1151/2012 states that ‘generic terms ’ ‘means the names of products which, although relating to the place, region or country where the product was originally produced or marketed, have become the common name of a product in the Union’. Article 5(2) of Regulation No (EU) 1151/2012 provides that “geographical indication” is a name which identifies a product a) originating in a specific place, region or country, b) whose given quality, reputation or other characteristic is essentially attributable to its geographical origin; and, c) at least one of the production steps of which takes place in the defined geographical area.’ Unlike protected designations of origin or protected geographical indications, generic terms do not protect against the commercial use of a registered name in respect of products not covered by the registration where those products are comparable to the products registered under that name or where using the name exploits the reputation of the protected name; or against any misuse, imitation or evocation (see Article 13 of Regulation (EU) No 1151/2012).

The dispute arises from a conflict between the German company BALEMA GmbH (‘BALEMA’) and the Italian Consorzio Tutela Aceto Balsamico di Modena (‘the Consorzio’). BALEMA produces vinegar-based products and markets them in the southwestern German region of Baden. The labels on its products bear, amongst others, the legend ‘Theo der Essigbrauer, Holzfassreifung, Deutscher Balsamico traditionell, naturtrüb aus badischen Weinen’ [Theo the vinegar brewer, matured in wooden barrels, German balsamic vinegar, traditional, naturally cloudy, made from Baden wine] or ‘1. Deutsches Essig-Brauhaus, Premium, 1868, Balsamico, Rezeptur No 3’ [first German vinegar brewery, premium, 1868, balsamic, recipe No 3]. It is not contested that these products do not fulfil the product specifications contained in Regulation (EC) No. 583/2009. The Consorzio, a consortium of producers of the products designated by the name ‘Aceto Balsamico di Modena’, considers that BALEMA’s use of the designation ‘Balsamico’ infringes the PGI ‘Aceto Balsamico di Modena’.

The Consorzio thus served a warning notice on BALEMA. BALEMA in turn brought an action before the German courts against the Consorzio seeking a judgment confirming that there had been no trade mark infringement. That action was unsuccessful. BALEMA’s appeal was upheld as the court considered that there was no infringement of Article 13 of Regulation (EU) No 1151/2012, because the protection for ‘Aceto Balsamico di Modena’ granted by Regulation (EC) No 583/2009 was conferred only on the entire name and not on the non-geographical elements of the term as a whole, even if used jointly. After a second appeal (on points of law only) was lodged, the Bundesgerichtshof (BGH – Federal Court of Justice, Germany) suspended proceedings and referred the following question to the CJEU for a preliminary ruling: Does the protection of the entire name ‘Aceto Balsamico di Modena (PGI)’ extend to the use of the individual non-geographical terms of that name, namely ‘Aceto’, ‘Balsamico’ and ‘Aceto Balsamico’?

The Advocate General first notes that Article 13 of Regulation (EU) No 1151/2012 grants a very broad scope of protection for PDO and PGI. However, if a PDO/PGI contains a generic element, the use of this element is excluded from the protection. For example, the word ‘prosciutto’ or ‘ham’ can be used by other producers and suppliers, although ‘Prosciutto di Parma’ is registered as a PDO.

Thus, before examining a possible infringement, it must be determined whether the PGI ‘Aceto Balsamico di Modena’ contains generic – and therefore unprotected – elements. To do so, the Advocate General examines the concept of ‘generic term’ (in his view, very specific and limited in scope). According to the CJEU, a name becomes generic only if the direct link between, on the one hand, the geographical origin of the product and, on the other hand, a specific quality of that product, its reputation or another characteristic of the product, attributable to that origin, has disappeared, and if that the name only describes a style or type of product (see judgment in case C‑343/07 [Bavaria and Bavaria Italia]). In the view of the Advocate General, is not necessarily crucial whether a term has a particular meaning in a given language but rather whether it lacks a current geographical connotation. In this sense, despite the fact that the word ‘feta’ means ‘slice’ in Italian, the large majority of consumers in Europe associate the name with the specific cheese produced in Greece and, given the current geographical connotation, it is not a generic term.

In the present case, according to the Advocate General, ‘Aceto’ is obviously a common Italian word, and also the English root words ‘balsam’ and ‘balm’ are just too common and well established to be protected individually as a PGI. These words do also not have a current geographical connotation so that, on this basis, they are ‘generic terms’. Nevertheless, since it ultimately matters how these words are perceived by the ‘average consumer who is reasonably well informed and reasonably observant and circumspect’, this must be decided by the national court (and not the CJEU).

Yet the Advocate General holds the view that the CJEU can give a definitive ruling on this matter if it is approached from the slightly different angle of an analysis of the provisions of Regulation (EU) No 583/2009. In this respect, the Advocate General refers to recitals 2, 3, 5 and 7 of Regulation (EC) No 583/2009, according to which Germany, Greece and France submitted objections to the registration of the name ‘Aceto Balsamico di Modena’, as they (in particular Germany and Greece) considered that the terms, especially ‘Aceto balsamico’, were generic in character. Moreover, recital 10 of Regulation (EC) No 583/2009 states, inter alia, that ‘protection is granted to the term “Aceto Balsamico di Modena” as a whole. The individual non-geographical elements of that composed 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.’

It is clear, he continued, in particular from recital 10 of Regulation (EC) No 583/2009, that the European legislator considered that ‘Aceto’, ‘Aceto Balsamico’ and ‘Balsamico’ are generic terms or unprotected non-geographical words, which could continue to be used provided that the principles and rules applicable in European Union law are respected. The registration of the designations ‘Aceto balsamico tradizionale di Modena (PDO)’ and ‘Aceto balsamico tradizionale di Reggio Emilia (PDO)’ pursuant to Regulation (EC) No 813/2000 also indicates that the protection is only granted to the name ’Aceto Balsamico di Modena’ as a whole’, whereas the terms ‘Aceto’, ‘Balsamico’ and ‘Aceto Balsamico’ are simply common words. In conclusion, the Advocate General proposes to the CJEU that the request for a preliminary ruling from the BGH be answered as follows: The protection of the entire name ‘Aceto Balsamico di Modena’ under Regulation (EC) No 583/2009 does not extend to the use of the individual common words or non-geographical terms ‘Aceto’, ‘Balsamico’ and ‘Aceto Balsamico’.

Although the approach adopted by the Advocate General seems acceptable from a purely legal perspective, it is open to dispute whether these three terms actually do (sort of implicitly) have a geographical connotation (to Modena), and the proposed approach thus excessively limits the protection of the PGI ‘Aceto Balsamico di Modena’.