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Molinos IP SA C. Conzorzio Tutela del Lambrusco Di Modena c. Cese de Oposición al Registro de Marca. Causa 6357.2012 del 02.12.2021

This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.

 

Session 3: Emerging Issues in Geographical Indications

 

Federal Civil and Commercial Court of Appeals - Chamber I, Argentina [2021]: Molinos IP S.A. v Conzorzio Tutela del Lambrusco di Modena and Conzorzio per la Tutela dei

Vini Reggiano

 

Date of judgment: December 2, 2021

Issuing authority: Federal Civil and Commercial Court of Appeals

Level of the issuing authority: Appellate Instance

Type of procedure: Judicial (Civin( �/span>

Subject matter: Geographical Indications

Opponent/Appellant: Molinos IP S.A.

Applicant/Respondent: Conzorzio Tutela del Lambrusco di Modena and Conzorzio per la Tutela dei Vini Reggiano

Keywords: Geographical indications, Opposition to registration, Wines

 

Basic facts: The appeal arises out of an application (“the Application”) made by Molinos IP S.A. (“Molinos”) to register “Emilia Nieto Senetiner” as a trademark in class 33 (Alcoholic beverages), specifically for wines.

 

Conzorzio Tutela del Lambrusco di Modena, Conzorzio per la Tutela dei Vini Reggiano and Conzorzio Tutela Vini Emilia, the latter joining the process at a later stage (all referred to as “Conzorzios”), opposed the Application on the grounds that the trademark contains the word Emilia, which is a geographical indication for wines registered in Italy and the European Commission database “E-Bacchus”.  The Conzorzios are responsible for protecting this GI worldwide.  The GI was not registered before the Argentinean National Institute of Viticulture at the time of the Application.

 

Molinos filed legal action against the opposition to the registration before the first instance court.  The first instance court dismissed the claim and confirmed the validity of the opposition.  Molinos appealed the decision alleging, inter alia, that the GI was not registered in Argentina by the time of the Application.

 

Held: The Federal Civil and Commercial Court of Appeals (“Court of Appeals”) rejected Molino’s appeal based on Articles 22 and 23 of the TRIPS Agreement.  The Court held that the Application should be refused since Emilia is a protected GI in Italy since 1995, and the Application, which contains Emilia in its trademark, was made in 2010.

 

Additionally, the Court of Appeals declared the inapplicability in this case of Article 3 of Decree No. 242/2019 of April 1, 2019, on Approval of the Regulation of Law No. 22.362 of December 26, 1980, on Trademarks and Designations.

 

Relevant holdings in relation to emerging issues in geographical indications: The Court of Appeals affirmed that in Argentina, after the ratification of the TRIPS Agreement in 1999, a trademark can be refused registration or can be invalidated if “it contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods in that Member is of such a nature as to mislead the public as to the true place of origin.” (Article 22.3 of TRIPS Agreement).

 

Specifically for wines and spirits, the TRIPS Agreement has provided additional protection in which the registration of a trademark for wines or spirits that contains or consists of a GI identifying wines or spirits shall be refused or invalidated with respect to wines or spirits that do not have this origin (Article 23 of TRIPS Agreement).  The registration can be refused or invalidated without the need to examine if there is a likelihood of confusion.

 

Regarding whether it is necessary to register the GI beyond its country of origin, the Court of Appeals interpreted the TRIPS Agreement in a manner that does not impose an obligation for the GI to be registered outside its place of origin.  Thus, in this case, the registration of the foreign GI in Argentina is discretionary, and registration in Italy is sufficient for its protection.  

 

Finally, Article 3 of Decree No. 242/2019 establishes that the national or foreign GIs referred to in Art. 3 c) of Law No. 22.362 includes the GIs expressly recognized by Argentina.  However, GIs for wines are subject to the special Law No. 25.163 and its corresponding decree, as well as the special provisions for wines and spirits in the TRIPS Agreement.  Thus, Article 3 of Decree No. 242/2019 is not applicable to this case.

 

                                                                                      

Relevant legislation:

TRIPS Agreement (Articles 22, 23 and 24)

Law No. 22.362 of January 2, 1981, on Trademarks and Designations

Law No. 25.163 of September 15, 1999, establishing General Rules for the Description and Presentation of Wines and Wine-based Spirits

Law No. 24.425 of December 7, 1994, on Approval of the Final Act Embodying the Results of the Uruguay Round of Multilateral Trade Negotiations: Ministerial Decisions Declarations and Understandings, and the Marrakesh Agreement

Decree No. 242/2019 of April 1, 2019, on Approval of the Regulation of Law No. 22.362 of December 26, 1980, on Trademarks and Designations