The first Senate of the German Federal Supreme Court (Bundesgerichtshof) has decided to submit several questions to the European Court of Justice regarding the extent of the protection awarded to an geographical indication (GI) under Council Regulation (EEC) No 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, when in conflict with an international trade mark registration. Or, in simple words: can beer that has been brewed in the Netherlands be sold under the trade mark “Bavaria Holland Beer”?

The claimant in the case is the Bavarian Brewers Association (Bayerische Brauerbund e.V). One of its tasks is monitor the correct usage of the geographical indication "Bayerisches Bier" (“Bavarian Beer”), which had been registered under the simplified system set out in Article 17 of Council Regulation (EEC) No 2081/92 in 2001. The application for registration as a geographical designation under the Regulation had been filed at the beginning of 1994. The defendant is Brewery Bavaria N.V., a Dutch brewery, who is the proprietor of an international trade mark registration for “BAVARIA HOLLAND BEER” (word mark) which has been protected in Germany with a priority date of 28 April 1995 covering the good “beer”. The claimant had claimed an infringement of the GI “Bayerisches Bier” under Council Regulation No. 208/92 and asked that the defendant agrees to a cancellation of the protection of the international trade mark for Germany. The Higher Appellate court of Munich (Oberlandesgericht München) had allowed the claim, basing its decision on Germany’s 1994 application under Article 17 of Council Regulation (EEC) No 2081/92. The fact that “Bavarian Beer” was only protected as a geographical indication in 2001 was not decisive. The question is, however, whether it is the application or the registration date of the geographical indication that is relevant given that under the simplified system of Article 17 it is only the final registration that is published.

Dutch Brewery Bavaria N.V. appealed to the Federal Supreme Court, which has now submitted several questions to the European Court of Justice regarding the extent of protection provided by (Article 17 of) Council Regulation (EEC) No 2081/92 regarding the protection of a geographical indication when in conflict with a “younger” international trade mark. A similar case involving the same parties has also been submitted to the ECJ by an Italian court. One question to be decided is how a translation of (or an allusion to) the geographical designation should be treated, when there is no deception regarding the actual origin of the product in question; such as in this case where the origin of the beer is clearly “Holland” and not Bavaria. Another question that will have to be decided is whether the regulation, under which "Bayerisches Beer" was registered, is valid and if it is, can the claimant claim protection under German national laws?

(Case reference AZ: I ZR 69/04 - Decision of 14 Februar 2008; the Federal Supreme court's press release can be retrieved here here [in German]; the full decision will subsequently be available here: Beschluss des I. Zivilsenats vom 14.2.2008 - I ZR 69/04 -).