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European IP Bulletin, Issue 4, August/September -
General IP
General IP
6. Protected Designation Of Origin: Parma Ham And Grana Padano Cheese
Maintaining the quality and reputation of Grana Padano cheese and Parma ham justifies the rule that the product must be grated or sliced and packaged in the region of production.
On May 20th, 2003, the European Court of Justice (ECJ) gave two long-awaited rulings on the Protected Designations of Origin (“PDOs”) of Parma ham and Grana Padano cheese
In the Parma ham case Consorzio del Prosciutto di Parma and Salumificio S. Rita SpA v Asda Stores Ltd and Hygrade Foods Ltd, C-108/01, the Consorzio del Prosciutto di Parma brought proceedings against Asda and Hygrade for slicing and packaging Parma ham outside the Italian northern region. The Italian producers, who do not object to the slicing of a Parma ham in front of a customer’s eyes at a delicatessen counter, wished Asda and Hygrade to cease their activities, on the ground that they were contrary to the rules for the PDO applicable to Parma ham.
In the Grana Padano case Ravil SARL v Bellon Import SARL and Biraghi SpA, C-469/00, the Italian company Biraghi, which is one of the producers of Grana Padano cheese in Italy, and the French company Bellon, which is the exclusive importer and distributor of Biraghi products in France, sued Ravil, a company which imports, grates, pre-packages and distributes Grana Padano cheese in France, to cease distribution of Grana Padano cheese, arguing that it is a condition of the PDO that the use of the Grana Padano name is subject to the condition that the grating and packaging are done in the region of production.
The court found that the grating of cheese and the slicing of ham and their packaging constitute important operations which may damage the quality and authenticity and consequently the reputation of the protected designation of origin (PDO) if those requirements are not complied with. The specifications for Grana Padano cheese and Parma ham define checks and detail strict operations in order to preserve the reputation of those two products.
The court pointed out that the PDOs of those products would not be protected in the same way by an obligation imposed on operators outside the region of production to inform consumers by appropriate labelling that grating, slicing and packaging have taken place outside that region.
As a consequence the Court ruled that maintaining the quality and reputation of Grana Padano cheese and Parma ham justified the rule that the product must be grated or sliced and packaged in the region of production.
However, the Court found that the protection conferred by a PDO does not normally extend to operations such as grating, slicing and packaging the product. The Court stated that those operations are prohibited to third parties outside the region of production only if that is expressly laid down in the specification of the PDO. Indeed, as the Court pointed out, the specification determines the extent of the uniform protection which the 1992 Regulation establishing Community protection for designation of origin and geographical indications for agricultural products and foodstuffs confers within the Community.
7. Swedish Crackerbread To Be Re-Branded 27 Years After It Was Launched
Wasa, a subsidiary of the Italian bakery group Barilla, was ordered by a Swedish court to re-brand one of its most famous products, Moraknaecke, almost three decades after it was first launched.
The Swedish Market Court (Marknadsdomstolen), a specialised court that handles cases related to the Competition Act as well as cases involving the Marketing Act and other consumer and marketing legislation has given the crackerbread giant Wasa a year to come up with an alternative name for Moraknaecke, which is one of it’s leading products.
Despite Wasa’s argument that Moraknaecke is a well-known brand name and not a reference to the cracker’s origins, the court found that the name Moraknaecke could mislead consumers regarding the origin of the crackers since they were not produced in the Dalarna region, where the Mora town is situated. Thus, after many efforts to create and build the Mora brand and many years of marketing, Wasa will have to find a new name for Moraknaeke.
Wasa’s competitor, the family firm Leksandsbroed, which is actually based in the Dalarna region had been objecting to Wasa’s use of the Mora name since 1970. Leksandsbroed chief executive Rune Joon who welcomed the court’s decision noted that “a resort’s good name and reputation belongs to everyone who lives and works there”.
8. Third Country Agreement Is Permissible
Budejovický Budvar v Rudolf Ammersin Gmbh, C-216/01, Opinion of the Advocate General
Following an action between a Czech brewery and an Austrian beer distribution company, the European Court of Justice is examining the protection of the geographical indication ‘Bud’. It has to consider if an international agreement between a Member State and a third country falls under Art. 307 EC. The Advocate General has proposed that such agreement is permissible.
An agreement between Austria and Czechoslovakia, dated 11th June 1976, conferred the protection of denominations of origin to agricultural and industrial products. The convention signed on the 7th June 1979 listed the products that are granted protection, beer being one of them, including denominations such as “Bud, Budejovické pivo, Budejovické pivo – Budvar, Budejovický Budvar”.
On the 1st January 1993, Czechoslovakia separated in two countries: the Czech Republic and Slovak Republic. The Czech Republic then officially assumed all multilateral and bilateral treaties that were in force (Constitutional law 4/1993). This was confirmed by Austria in a public statement that recognises such agreement through succession (BGB1 1997, III, 123, 31st July 1997).
Budejovický Budvar exports to Austria the Beer ‘Budweiser Budvar’. Ammersin, an Austrian company, placed on the market an American beer ‘American Bud’. The Oberster Gerichsthof (Austrian Supreme Court) held on 1st February 2000, that the import of the ‘American Bud’ violates the indication of origin ‘Bud’, and that this is not contrary to the EC treaty. However, a reference was made to the ECJ seeking clarification on various points concerning the agreement.
The appellation ‘Bud’ is an abbreviation of a Czech city Budweis, which has a tradition in brewing beer.
The opinion of the Advocate General makes the following points:
i) Regulation 2081/92 on the protection of geographical indications and designations of origin, and Articles 28 EC and 30 EC, do not preclude the application of a bilateral agreement between a third country and a member state that grants absolute protection to a geographical indication designating the origin of a product, even though its qualities are not particularly tied to the origin. Also, it was emphasised that even if ‘Bud’ cannot be protected under Reg.2081/92, its protection is not necessarily precluded by means of bilateral agreement between a Member State and another country.
ii) Articles 28 EC and 30 EC prevent such protection when it cannot be linked to the geographical origin, thereby according absolute protection, regardless of any risk of confusion.
iii) The 1976 Vienna Treaty between Austria and Czechoslovakia falls under Article 307 EC, even though Austria has only recently made publicly official the Czech succession of the treaty in 1997, after Austria joined the EU.
iv) However, Article 307 EC emphasises that the contracting member states have to insure the highest conformity to community obligations.
9. The European Commission Selects Eurid To Manage The .EU
The European Commission has taken steps towards the establishment of the .eu Top Level Domain (TLD) by selecting EURID (the European Registry for Internet Domains) as the official Registry for the .eu domain.
On May 22nd, 2003, the European Commission announced that it had chosen the non‑profit making EURID consortium to run the .eu TLD. This decision is the latest step in the process of creating a new European TLD extension. EURID responded to the Call for Expression of Interest that was launched by the European Commission in August last year. After an evaluation of the bids by a panel of independent experts, EURID was designated as being the best choice to run the .eu registry.
Now that the official Registry has been selected, the Commission and Registry must take additional steps before the .eu domain will become available. According to EU Regulation No. 733/2002, which governs the establishment of the .eu country code TLD within the Community, some of the main tasks of EURID will be to organise, administer and manage the .eu TLD on the basis of principles of quality, efficiency, reliability and accessibility. Steps will also be taken to include .eu in the global Internet Domain Name System, managed by the Internet Corporation for Assigned Names and Numbers (ICANN). Finally, in consultation with the Member States and the Registry, the Commission will have to adopt public policy rules concerning the implementation and function of the .eu TLD and the public policy principles on registration. These rules will mainly deal with issues like speculative and abusive registrations of domain names (cyber squatting), protection of intellectual property rights, issues of language and geographical concepts and the extra‑judicial settlement of conflicts.
It is expected that the .eu domain will be available by the end of this year.
10. Data Proection Notification - Scam Update
As this interim hearing shows, the Office of Fair Trading is continuing to crack down on fraudsters holding themselves out as official organisations enforcing the Data Protection Act.
In early 2003, shortly after becoming Information Commissioner, Richard Thomas stated that one of his priorities was to crack down on companies and individuals profiting by using misleading advertising with regards to data protection notification services. On 7 August 2003 the High Court supported the Information Commissioner’s stance and granted an injunction against Christopher Yewdall preventing him from being involved in any way with certain types of advertising. The injunction is a temporary measure pending judgment in the claim brought against him by the Office of Fair Trading.
It is alleged that Yewdall was involved with misleading advertisements relating to notification of data controllers with the Information Commissioner under the Data Protection Act 1998. The names used in the advertisements included: Data Protection Agency, Data Protection Agency Registrations, Data Protection Agency Services, National Registrations, Data Protection Registration and Data Protection Registration Services.
The OFT received thousands of complaints from businesses regarding these advertisements, which it argues are misleading “because they give the impression they are from an official body, that businesses receiving them are under a legal obligation to register with the sender and that notification costs £95”.
11. Withdrawal Of Marketing Authorisation May Not Entail Automatic Withdrawal Of Parallel Import License
Paranova Oy v Lakemedelsverket, C-113/01, ECJ [reference by supreme administrative court, Finland]
Interpreting Art. 101 of the Finnish Medicinal Products Law and Paragraph 4.3 of the Finnish Regulation 1/1997 on parallel imports, the Finnish Medicinal Products Agency (“the Agency”), decided that the withdrawal of marketing authorisation of a medicinal product by the holder amounted to automatic withdrawal of its parallel import license. However, the European Court of Justice has held that this decision violates the principle of free movement of goods under Art. 28 EC.
Suomen Astra Oy (“Astra”) owned the marketing authorisation in Finland for a medicinal product known as ‘Losec enterkapslar’ in capsule form, while Paranova Oy held its parallel import license. Subsequently, Astra revoked its license for capsules and filed for marketing authorisation for tablets of a variant, which was a therapeutic equivalent to the former drug. On withdrawal, the Agency served a notice to Paranova stating that since the parallel import license depended on a valid marketing authorisation which had ceased, their parallel import license was no longer valid. Paranova appealed this decision to the Supreme Administrative Court, claiming that the decision was incompatible with Art. 28 and 30 EC. The Court stayed the proceedings and referred to the European Court of Justice (“ECJ”) the question of whether it was compatible with Art. 28 and 30 EC for a national agency to decide that a parallel import license automatically gets revoked when the marketing authorisation has been withdrawn by the holder for reasons unconnected with the effectiveness or safety of the medicinal product and despite the fact that the product has valid marketing authorisations in other Member States.
The ECJ, relying on Ferring (Case C-172/00, [2002] ECR I-6891), held that cessation of validity of a parallel import license following the withdrawal of the marketing authorisation violates Art. 28 EC, but may be justified to protect public health under Art. 30 EC.
The ECJ held that the primary objective of the Council Directive 65/65/EEC, as amended, on proprietary medicinal products, was to safeguard public health. Since no evidence was shown that marketing authorisation in the present case was withdrawn to protect public health and the product was in fact being marketed legally in other Member States under marketing authorisations, the ECJ, applying the proportionality test, held that Art. 30 EC requires the Member States to prohibit imports of products from other Member States to restrict what is necessary in order to achieve the aims concerning protection of health that are legitimately pursued. Furthermore, with regard to safety of health in Finland of an imported product without marketing authorisation in Finland, the ECJ considered the ‘Note for Guidance on Procedure for Competent Authorities on the Undertaking of Pharmacovigilance Activities’, published by European Agency in 1995, whereby the Member States have set up a database and which require them to, inter alia, report adverse reactions and safety data relating to medicinal products. The ECJ held that, since protection of public health was not in question, the interpretation of a national law stating that mere withdrawal of marketing authorisation would entail withdrawal of parallel import license could not be justified under Art.30 EC and was, therefore, contrary to Art. 28 EC.
Thus, a parallel import license may survive without its marketing authorisation in a Member State if the withdrawal has not been due to the drug’s effectiveness or safety.
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