1151/2012 on PDO and PGI, safeguards not only the protected designations of origin in the agri-food sector that are registered at the Community level but also any other designation of origin against any form of unauthorized use that “allows the undue exploitation of the reputation of the protected designation.” It remains, however, incontrovertible that Article 3(1)(c) of Directive 89/104/ EEC on trade marks, now Directive 2008/95/EC, does not permit the registration as a trade mark (individual) of either a geographical indication that influences the public’s perception of the quality of the products denoted, or a geographical indication that is potentially capable of designating the geographical origin of the category of products for which the mark is sought7. The coexistence of a trademark that coincides with a PDO or PGI is, in fact, permitted only under the following conditions: (a) it was registered prior to 1996; (b) it was registered in good faith; and (c) it has not lapsed8. It follows that, as a result of the reform, parasitism has become a measure and limit of protection, further aligning the regulation of geographical indications with that of trademarks, both in terms of protection and the balancing of interests9. In particular, from the perspective of the balancing of interests, it is evident that primary importance is attributed to the non-deceptiveness of the sign, which has always been fundamental for the recognition of geographical indications and has now also become the cornerstone of the new trademark law. Moreover, this consideration is made without accounting for the fact that such convergence could represent one of the potential ways to bridge the current divergence between the positions of European States and those of non-European countries, particularly American and Asian jurisdictions. In this regard, the reform of the Industrial Property Code appears to be appropriate to enable the lawful exploitation of the inherent value in “significant” geographic names, through the granting of licenses. The provision permits both Denomination of Origin Protection Consortia and territorial public entities to utilize geographic names and other symbols associated with the territory as tools to 7 See the General Court of the European Union, 4 May 1999, Case C-108/97 and C-109/97, Windsurfing Chiemsee; General Court of the European Union, 7 January 2004, Case C-100/02, Gerolsteiner Brunnen; Civil Tribunal of the European Union, 15 October 2003, Case T-295/01, Oldenburger. 8 See Court of Justice of the European Communities, 4 March 1999, C-87/97, Gorgonzola v. Cambozola. 9 In this regard, one should consider the primary importance attributed to the non-deceptiveness of the mark, a fundamental principle historically essential for the protection of designations of origin, which has now also become the cornerstone of the new trademark law. This emphasis has led some scholars to envisage the development of a sort of common legal framework for commercial signs, albeit understood as the existence of a shared underlying principle among signs of different types, rather than as a uniform regulation.
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