Geographical indications of spirit drinks (joined cases of C-4/10 andC-27/10) – the CJEU holds that Finnish trade marks must be invalidated.

10 August 2011

Mary Smillie

Cognac is a protected geographical indication of spirit drinks under Regulation (EC) No. 110/2008 [1] (“the Regulation”). Cognac is made in the area around the town of Cognac in mid-west France. It is a double-distilled spirit made according to strict regulations.  

The Regulation mentions “Cognac” as a geographical indication identifying wine spirits which originate from France.

The Regulation also prohibits the registration of trade marks which may adversely affect a protected geographical indication and states that, as a general rule, where such a mark has already been registered, it must be invalidated.

A Finnish company, Gust. Ranin Oy obtained national trade mark registrations in Finland for two figurative marks in the form of a bottle label, which included the word “cognac”.  These were registered on 31 January 2003 for “Konjakit [Cognacs]” in Class 33 [2] and “liquers containing konjakki” in Class 33 [3].  These registrations were opposed by the Bureau national interprofessionel du Cognac (BNIP).  The dispute went to the Supreme Administrative court in Finland which asked the Court of Justice whether it is permissible under the Regulation to register national trade marks containing the term ‘Cognac’ for products which, in terms of manufacturing method and alcohol content, do not meet the requirements set for the use of the geographical indication ‘Cognac’.

On 14 July 2011 the Court gave judgment without an Opinion.  It was held that although the contested trade marks were registered before the Regulation entered into force, the Regulation is applicable retrospectively as the obligation on Member States to prevent the use of a geographical indication identifying spirits for alcoholic beverages which do not originate from the place designated by that indication has existed in EU law since 1 January 1996.   

The Court observed that the Finnish trade marks cannot benefit from the derogation provided for under the Regulation (use of the trade mark acquired before the date of the geographical indication)  as “Cognac” has been protected under EU law since 15 June 1989 independent of the protection it has under French national law.

The Court also found that the use of a mark containing the term ‘Cognac’ for products which are not covered by that indication constitutes a direct commercial use of the protected indication.  Such a use is prohibited by the Regulation in so far as it concerns comparable products.  The Court found that this may be the position in the case of spirit drinks.

It was held that the Finnish authorities must invalidate the registration of the trade marks.


[1] Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89 (OJ 2008 L 39, p. 16).  

[2] The figurative element contained the endorsement  COGNAC L & P HIENOA KONJAKKIA Lignell & Piispanen Product of France 40% Vol 500  ml

[3] The figurative element contained the endorsement  KAHVI-KONJAKKI Café Cognac Likööri – Likör – Liqueur 21% Vo Lignell & Piispanenen 500 ml