In a recent case in Mexico, the Consortium pursued a company that had unduly named its product Parmigiano Reggiano and “affixed on it identical or similar symbols or indications to those registered as collective marks by the Consorzio”, namely Parmigiano Reggiano (Reg. No. 650677) and Parmigiano Reggiano Consorzio Tutela (Reg. No. 638817), without authorization. As such use presented a high risk of confusing consumers, the Consortium sought to obtain a preliminary injunction ordering the seizure of the infringing goods. An injunction was granted for the infringement of the Consortium’s collective trademarks registered in Mexico, but not for the infringement of the Parmigiano Reggiano Appellation of Origin (AO). This was because Article 229 of the Mexican IP law required that the right holder (the Consortium in this case) should clearly indicate on the product’s packaging or wrapping (e.g. using the symbol ®) that it was protected by an industrial property right.
The Mexican Supreme Court ruled that this provision only applies to patents and trademarks and not to AOs. It ruled, on the one hand, that IP rights, trademarks and AOs are separate and distinct in nature each bearing a different process of recognition. On the other hand, it ruled that the “adequate publicity” principle embodied in Article 229 was satisfied in respect of Parmigiano Reggiano by its registration in WIPO’s International (Lisbon) Register and by its publication in the WIPO Appellations of Origin bulletin. Through this very important ruling, the Mexican Supreme Court reaffirmed the protection in Mexico of the Appellation of origin “Parmigiano Reggiano” via the Lisbon Agreement. It also confirmed the specific nature of Appellations of Origin within intellectual property rights and that, as a result, IMPI, the Mexican Institute of Intellectual Property, incorrectly applied article 229 of the Mexican Law of Industrial Property in a specific case concerning the Appellation of Origin “Parmigiano Reggiano” and should not have rejected the request of provisional measures by the Italian Consorzio.
This summary has been extracted from an “oriGIn Alert”, which is a service reserved exclusively to oriGIn members.
