Having discussed the protection of the term "Aceto Balsamico di Modena" after an opinion by Advocate General Hogan this Fall, this writer waited for the decision of the CJEU with great intrigue. This was colored by a love of balsamic itself, but also with intrigue in relation to whether separate components of a PGI are protectable. Like on Christmas morning, the CJEU finally delivered its judgment earlier this month.
As discussed above, the case of Consorzio Tutela Aceto Balsamico di Modena v Balema GmbH concerned the registration "Aceto Balsamico di Modena" (PGI application here) in relation to a balsamic vinegar which is produced in the Modena region of Italy. Consorzio is a consortium of producers of the products designated by the PGI. Balema produces and markets vinegar-based products made from wines from the Baden region, including bearing the terms "Balsamico" and "Deutscher balsamico". Consorzio subsequently took Balema to court for infringement of the PGI, with Balema arguing that it didn't infringe the PGI as it didn't use the entirety of it and the components to the name are not protected separately.
The Court faced only a single question, which asked "...whether Article 1 of Regulation No 583/2009 must be interpreted as meaning that the protection of the name ‘Aceto Balsamico di Modena’ extends to the use of the individual non-geographical terms of that name".
They first set the scene by stating that the protection of various constituent parts of a registered name falls under the jurisdiction of national courts. With regards to 'compound' marks, such as Aceto Balsamico, that have not specifically mentioned that the individual components of the name are protected separately doesn't mean that those components are not protected outright. As set in Chiciak and Fol, "...in the absence of specific circumstances pointing to the contrary, the protection... covers not only the compound name as a whole, but also each of its constituent parts, that will be the case only if that constituent part is not a generic or a common term". Even though the case concerned an earlier Regulation, it still applies to Article 1.
The Court swiftly concluded that protection couldn't be afforded to the individual non-geographical terms of the Aceto Balsamico name. They further specified that "...the name ‘Aceto Balsamico di Modena’ that has an undeniable reputation on the national and international market and that it is therefore that compound name as a whole which meets the inherent condition for the product having a specific reputation linked to that name". To put simply, the terms ‘aceto’ and ‘balsamico’ (and their use in combination) won't benefit from the registration of the whole name.
The Court also noted that the terms would be designated as common terms under Chiciak (as they merely describe a common product such as a balm or a vinegar). Ultimately they denied protection for the individual terms in Aceto Balsamico di Modena.
The decision is not a very surprising one, as the extension of protection to non-geographical parts of PGIs could open the floodgates for the registration of incredibly long PGIs, and in effect deter competition in the marketplace in relation to similar products. Of course one expects the regional identifiers to remain protected, but extending protection to common terms would not be a good idea, especially since the authentic product is still protected through the PGI. The case is a good reminder to PGI holders to limit their protection to what matters; the stamp of regional quality for the product.
