Challenges of the Knowledge Society (Jun 2023)
THE LEGAL REGIME OF NAMES EXCLUDED FROM PROTECTION BY INDICATIVE SIGNS
Abstract
This study aims to analyse the legal regime of names that cannot be registered for protection by indicative sign, either because they do not meet the conditions provided for by Regulation (EU) no.1151/2012, whether they can mislead the consumer regarding the geographical origin of the product that designates it and at the same time analyse the various situations that may arise in the event of a conflict between the indicative signs and these names through the lens of the CJEU jurisprudence. In a mercantile society based on the circulation of goods, an important factor in choosing a quality product originating in a certain regions is the sign or name that appears on the label and that gives the product „added value”, the consumer being thus aware of his choice and at the same time protected against deceptive practices. But not all names can be registered and protected by indicative signs, Regulation (EU) no. 1151/2012 stipulating by art. 6 the exceptions from registration, the most common situation being that of generic names, names of products which, although related of the place or country where the product was originally produced or marketed, became the common name of a product in the Union. In its jurisprudence, CJEU has shown that in order to determine whether or not a name has become generic, the purpose for which a geographical indication or a designation of origin is registered under Regulation (EU) no. 1151/2012, namely that of avoiding abuse of a name by those who aim to benefit from the acquisition of a product protected by an indicative sign and for this the situation in the Member State of origin of the name and of consumption, the situation in other member states and the national or Community legislation must be taken into account. Likewise, a name proposed for registration as a designation of origin or geographical indication cannot be protected which, given the reputation and renown of a mark, as well as the duration of its use, is likely to induce in the consumer the true identity of the product. Although less common in practice as well as in the jurisprudence of the Court of the European Union, Regulation (EU) no. 1151/2012 also provides that there are also some other names that cannot be protected as a geographical indication or designation of origin, such as the name that coincides with the name of a plant variety or an animal breed and that may mislead the consumer as to the true origin of the product, such as and the homonymous or non-homonymous name which is likely to mislead the consumer regarding the true identity of the product.
