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A bitter more than sweet decision for “Aceto Balsamico di Modena”: no individual protection for its common terms

12 December 2019

The name “Aceto Balsamico di Modena” as a whole is registered as protected geographical indication (PGI) under Reg. (EC) 583/2009 ("the ABM Regulation”). Shall the protection be extended to its individual non-geographical terms?
 
This is the question referred by the Bundesgerichtshof (the Federal Court of Justice of Germany) to the Court of Justice of the EU (“CJEU”) in the course of proceedings between Consorzio Tutela Aceto Balsamico di Modena (the “Consorzio”) and Balema Gmbh (“Balema”) (C‑614/17).
 
According to the Consorzio, the use of the expressions ‘Balsamico’ and ‘Deutscher Balsamico’ on the labels of Balema’s vinegar-based products, infringes the “Aceto Balsamico di Modena” (PGI), since the labelled products do not fulfil the specifications contained in the ABM Regulation.
 
Let’s have a look to what the law states on this point.
 
According to the EU regulation of PGI/PDO (Reg. (EC) No 1151/2012), the protection of a name registered as a PGI or PDO that consists of several words may extend to the individual terms that it contains, providing that these are not generic, i.e. words that have become the common name of a product in the market.
 
In the case at hand, Recital 10 of the ABM Regulation states that the protection as PGI is granted to the term ‘Aceto Balsamico di Modena’ as a whole and not to its individual non-geographical components, such as “aceto”, “balsamico” or “aceto balsamico”. However, it is not specified if any of its individual non-geographical components shall be considered as generic terms.
 
As the Advocat General Hogan pointed out in its opinion, in assessing whether a term of a PGI is generic (or common), a decisive element is whether that term lacks a current geographical connotation. In the present case, nor “aceto” or “balsamico” seem to have a geographical meaning.
In fact, as confirmed by the same CJEU, “aceto” is the Italian word for vinegar, while ‘balsamico’ is mainly used to indicate a vinegar with a bittersweet flavour (even if the word is also adopted to describe calming effects).
 
Both of these terms are too common to obtain individual protection as a PGI hence, they shall be freely used by any producers and suppliers in the EU, even jointly or in translation.
 
Further comments
 
Although this decision may appear frustrating to some, this reasoning seems to be the right one. In fact, affirming the contrary would lead to the paradoxical situation where all the common terms included in a registered PGIs/PDOs, could be used by no one, such as the following words:

  • “pork”, “pie” or “pork pie”, because of the existence of the (UK) PGI “Melton Mowbray pork pie”;
  • “mozzarella”, “bufala” or “mozzarella di bufala”, because of the existence of the (IT) PDO “Mozzarella di Bufala Campana”
and so on.
 
While presenting their products in the market, producers need to be able to communicate to buyers and consumers their characteristics and, including generic terms on the label of foodstuffs or agricultural products, could be key to provide clear information and avoid confusion. On the other hand, the current legal framework sets out specific rules to prevent practices liable to mislead consumers. As the CJEU reminded earlier this year (C‑614/17, Queso Manchego), protection is granted anytime that third parties evoke the PGI/PDO by including [not only generic/common terms, but also] figurative signs reminding the geographical area with which a the protected name is associated, infringing activity.

Authors

Elisabetta Ferraro

Elisabetta Ferraro Trainee Trade Mark Attorney London (UK) Italian Qualified Lawyer

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