GORGO CAPRA invalidated on the basis of GORGONZOLA PDO - Some Italian guidance on the interpretation of the concept of “same type of products” in PDO/PGI Regulation.

With its decision of 9 May 2014, the Turin Business Court invalidated the Italian trademark GORGO CAPRA for “milk and products derived from milk” in class 29 on the basis of the earlier GORGONZOLA PDO. The other products covered by the mark in class 29 (“meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; edible oils and fats”) were held not belonging to the same class of products, since the only element they have in common is the fact that they are foodstuffs, while they fulfil different needs from the PDO cheese (and from milk and products derived from milk in general).

Background

The claimant, the Consorzio per la tutela del formaggio Gorgonzola, lodged a cancellation and infringement action against the owner of Italian trademark registration No 149790 GORGO CAPRA (word mark) filed in 2010 and registered in 2011 for “meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats” in class 29, on the basis of the earlier Protected Designation of Origin (“PDO”) GORGONZOLA, recorded on the PDO/PGI Register as of 1996 for a cheese made from pasteurised whole cow’s milk coming from the specific area of origin.

The defendant, an individual, owner of the above GORGO CAPRA registration, was using the marks GORGO CAPRA and GORGO DI CAPRA for a round-shaped cheese that he described as a highly ripened “gorgonzola caprino” (“caprino” meaning “of a goat”, thus “goat’s milk gorgonzola”).

The claimant requested that the mark be declared null and void on the basis of Articles 13 and 14 of the PDO/PGI Regulation No 510/2006, that the defendant be held liable for counterfeiting the PDO and ordered to abstain from further producing, commercializing, promoting and selling dairy products under the sign GORGO CAPRA or GORGO DI CAPRA. In addition, the claimant requested that the defendant be ordered to pay compensation for damages, all legal costs and a penalty of 500 Euros for each future infringement or delay in fulfilling of the Court decision, in addition to the publication in a font double-than–normal-sized font in two national Italian newspapers.

The defendant requested the rejection of the claims and furthermore argued that his mark, albeit registered, wasn’t yet in use and that in any event GORGO CAPRA did not evoke or misuse the GORGONZOLA PDO because the word GORGO (meaning VORTEX) was chosen since “it evokes the concept of a whirlpool during the mechanic milking process” and was purposely registered as a separate word from CAPRA (GOAT) to better specify these two meanings.

Decision

In the view of the Court, which in its decision cites the ECJ decisions in the GORGONZOLA/CAMBOZOLA and the PARMESAN Cases (Case Nos C-87/97 and C-132/05, respectively), the GORGO CAPRA mark clearly evokes the Gorgonzola PDO since, like in the Cambozola case, the mark reproduces a part of the PDO and, as a whole, is composed of the same number of letters as GORGONZOLA. In addition, according to the Court, the case at hand is an even more clear-cut example of evocation than in the CAMBOZOLA case: Here, the first word element of the mark GORGO is not only phonetically identical to the first part of GORGONZOLA, but also captures the immediate attention of the consumers so that - when confronted with a cheese named GORGO CAPRA – they immediately and automatically think of Gorgonzola cheese. The second term, CAPRA, will merely induce the consumer to think that it concerns a particular type of “gorgonzola” made from goat’s milk.

The Court further states that all of the defence arguments made by the plaintiff are irrelevant, since Article 14 (2) of the PDO/PGI Regulation specifies that only an earlier trademark may, under strict conditions, continue to be used notwithstanding the existence of a PDO/PGI.

In light of the above, the Court invalidates the GORGO CAPRA trademark pursuant to Articles 13 and 14 of the PDO/PGI Regulation but for “milk and products derived from milk” only. According to the Court, with reference to Article 14 of the PDO/PGI Regulation, a later trademark the use of which corresponds to a situation covered by Article 13 PDO/PGI Regulation should be invalidated only where it relates to the same class of products as the PDO. In the view of the Court, the other products covered by the mark in class 29 (“meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; edible oils and fats”) do not belong to the same class of products, since the only element they have in common is the fact that they are foodstuffs, while they fulfil different needs from the PDO cheese (and from milk and products derived from milk in general).

The Court further ordered the plaintiff to abstain from all further production and commercialization of milk products bearing the expression GORGO CAPRA or GORGO DI CAPRA and established a penalty of 300 Euros for each infringement made following notification of the Court’s decision. In the absence of any convincing evidence of damages, however, the Court did not uphold the claimant’s request to receive compensation for damages. Furthermore, the Court ordered the plaintiff to pay 9000 euros to the Consorzio in legal costs and the publication of its ruling in the national Italian newspapers la Stampa and Il Corriere della Sera.

Comment

This decision seems in line with the OHIM Cancellation Division decision (6890C of 8 July 2013) with reference to CTM No 5032404 TRADIZIONI DI PARMA (figurative) which held cheese comparable to milk and milk products but not comparable to the other products in class 29 (an appeal was lodged against this decision but rejected in the absence of any statements of grounds filed). Further guidance from the ECJ on the interpretation of the concept of the “same type of product” (Article 7(1)(k) CTMR and Article 14 PDO/PGI Regulation) and “comparable products” (Article 13 PDO/PGI Regulation), after its Cognac II decision, that appears to leave room for a broader definition of “comparable products” would be helpful.