Last year in May, I reported about a change in German legislation which resulted in a potential loss of legal entitlement for GI representing organisations to raise GI infringement claims in Germany.
In the meantime, we have been in touch with the German Ministry of Justice and alerted the Ministry of the issue which now has come up with a reform bill to fix the problem.
In short, the German Trade Mark Act (MarkenG) is to be amended extending the list of persons entitled to enforce GI rights. The relevant section of the trade Mark Act – Section 135 – is planned to in future include also:
- groups within the meaning of Article 3 number 2 of Regulation (EU) No. 1151/2012;
- recognised producer organisations, recognised associations of producer organisations and recognised interbranch organisations within the meaning of Regulation (EU) No 1308/2013, if its objective also includes protection against infringements under Article 13 of Regulation (EU) No 1151/2012.
This amendment will indeed be of help for organisations representing GIs in the agricultural products, food stuffs and wine sector. GIs concerning spirits (Regulation 787/2019) and aromatised wine products (Regulation 215/2014), however, are not being mentioned. For spirits the Ministry holds the opinion – set out in the reasoning of the bill – that this new section may also be applicable to GIs concerning spirits, since German courts have ruled that the section 135 also applies to GIs concerning wines and spirits (German Federal Supreme Court (BGH) GRUR 2019, 185, 187, para 22 – Champagner Sorbet II; BGH GRUR 2016, 970, 972, para 20 – Champagner Sorbet I; Regional Court (LG) of Hamburg GRUR-RR 2017, 312, 313, para 22 – Glen Buchenbach). German legal commentaries concerning section 135 argue that it is applicable to all GIs regulated by EU law (e.g. Ströbele / Hacker / Thiering, Markengesetz, 13. Edition 2021, § 135 MarkenG, para. 3).
GI organisations representing spirits may, therefore, still have to rely on case law instead of written legislation for their entitlement to enforce GIs in Germany. Organisations representing aromatized wine GIs seem to be missing out completely.
All in all, the current bill only fixes half of the problem and one has to be hopeful that the current wording will still be amended to include all kinds of GI representing organisations.
