It is unclear what impact the EU Court’s decision in the Nero Champagne case may have on EUIPO’s practice regarding the registration of trade marks that contain or refer to TSGs recognized at an earlier time. Currently, EUIPO rejects such registrations under two conditions: first, if such a situation is found to be an «usurpation» or «evocation» of a TSG or if it is likely to confuse the consumer99; second, if the application for registration relates to products covered by the TSG or when they are used as commercially significant ingredients100. However, EUIPO allows such registrations if there are limitations on the claim of trade marks, so that the exclusive right only applies to products that comply with the TSG specifications101. Here, the underlying issue is also somewhat different from the Nero Champagne case. With regard to TSGs, EUIPO’s approach is based on the assumption that the rules, governing the relationship between European trade marks and designations of origin, can be applied systematically to the one between the trade marks and TSGs102. Probably, Regulation EU/ 2024/1143 doesn’t allow it103. In any case, since the terms constituting TSGs are common names often, it seems more likely that the rejection of applications for registration of European trade marks – potentially conflicting with TSG names – may instead be due to the lack of the conditions for their registration (to be verified on a case-by-case basis), because they lack distinctive character or because they refer to expressions that have become common usage104. Finally, the registration of a name as a TSG also does not prevent the marketing of products whose labelling contains or includes the name of a plant variety105 or an animal breed106, if used in good faith. 99 EUIPO, Guidelines on EU trade marks, cited above, p. 711, para. 4. 100 EUIPO, Guidelines on EU trade marks, cited above, p. 712, para. 5. 101 EUIPO, Guidelines on EU trade marks, cited above, p. 712, point 5.1: “therefore, objections should be waived if the relevant goods are restricted to comply with the product specification of the TSG. The wording that the Office recommends is ‘‘[TSG name]’ (TSG) [product covered by the TSG]’. Other wordings are, however, acceptable as long as the applicant clearly identifies the TSG and use thereof ”. 102 EUIPO, Guidelines on EU trade marks, cit., p. 710, point 2.2: “the Office considers that a systematic approach should be followed and draws an analogy with Article 7(1)(j) EUTMR: the registration of an EUTM application should be refused or the registration of an EUTM invalidated if there is conflict with a TSG”. 103 Reg. (EU) No. 2024/1143, cit., art. 5, par. 1 (which excludes that the principles set forth in Title II apply to TSG, regulated in Title III). Against EUIPO’s interpretation, the observation should also be valid that, where the legislator wished to extend to TSGs the means of protection granted to geographical indications, it expressly provided for them, as in the case of counterfeiting in online trade (on which we will discuss later in the text). 104 Reg. (EU) 2017/1001, cited above, Art. 7(1)(b) and (d). 105 The definition of “plant variety denomination” is brought by Art. 2(1)(i) of Reg. (EU) No. 2024/1143, cited above. 106 The definition of “animal breed denomination” is brought by Art. 2(1)(j) of Regulation (EU) No. 2024/1143, 346 ERMENEGILDO MARIO APPIANO
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