CJEU on geographical designation of origin: German "Balsamico" permitted

Background

The name 'Aceto Balsamico di Modena' has been entered in the Register of protected designations of origin and protected geographical indications since 2009. The use of the protected geographical indication is subject to strict conditions: Only products obtained from certain varieties of white wine and produced exclusively in the provinces of Modena or Reggio Emilia are eligible.

The applicant is a German company which produces and markets various products based on vinegar from Baden wines. The labels on its products contain, inter alia, the terms 'Balsamico' and 'Deutscher Balsamico', with reference to the origin of the products made from wines from Baden.

The Consorzio Tutela Aceto Balsamico di Modena, an association of, inter alia, producers of products bearing the name 'Aceto Balsamico di Modena', requested the German producer to refrain from using the term 'balsamico'. The latter then brought an action for a declaration that it was entitled to use the word 'balsamico' for its products.

The German Federal Supreme Court, before which the case was brought at third instance, referred the matter to the CJEU for a preliminary ruling, asking whether the protection of 'Aceto Balsamico di Modena' applied only to the entire designation or also to the use of its non-geographical components such as 'aceto', 'balsamico' and 'aceto balsamico'.

Decision

In its judgment, the CJEU answers the question referred to it by stating that the protection of the protected geographical indication 'Aceto Balsamico di Modena' does not extend to the use of its individual non-geographical terms.

First, the Court states that the name 'Aceto Balsamico di Modena' enjoys an undoubted reputation on the international market. The compound name as such therefore satisfies the condition for the product corresponding to it to be particularly well reputed.

However, an extension of protection to the non-geographical elements of the indication is out of question. The term 'aceto', Italian for vinegar, is common, and the term 'balsamico' is a common adjective used to designate a vinegar characterized by a sweet and sour taste. The use of the individual terms 'aceto' and 'balsamico' is therefore not covered by the protection of the geographical indication.

Conclusion

With its judgment, the CJEU endorses the Opinion of Advocate General Hogan of 29 July 2019. In it, the Advocate General expressed his opposition on extending the protection of the protected geographical indication 'Aceto Balsamico di Modena' to the use of the individual components 'aceto' and 'balsamico' and explained his point of view by making the following reference, among others: Like 'Aceto Balsamico di Modena', 'Prosciutto di Parma' is entered in the register of protected designations of origin and geographical indications, but that does not mean that the term 'prosciutto', Italian for 'ham', may not be used by producers not established in Parma.

As a result, the decision is as logical as it is clear. It is one of a number of important decisions taken by the CJEU this year on protected geographical indications and designations of origin. See also our contributions on "Glen Buchenbach" and "Manchego cheese".

Authored by Sabrina Mittelstaedt and Patrick Fromlowitz