The question of evocation: Viiniverla v Sosiaali
01 May 2017
According to the Court of Justice of the European Union (CJEU), a 'geographical indication' (GI) for CALVADOS may prevent use of VERLADOS even though VERLADOS is produced in the Finnish village of Verla, is sold only in Finland and the names share only one syllable and four letters in common.
Viiniverla produced a cider spirit drink under the name VERLADOS. Sosiaali, owner of a GI for CALVADOS, a Normandy apple brandy, complained to the European Commission (EC) about the use of VERLADOS suggesting it had previously been called VERLA and the "DOS" element was only added once sales of CALVADOS became popular in Finland. The Finnish authorities countered, stating VERLADOS was a local product produced in the village of Verla and sold only in Finland. The Finnish authorities also argued that CALVADOS and VERLADOS have only one syllable in common which, according to case law, is not sufficient to give rise to an evocation of the CALVADOS GI. The EC were unconvinced and warned the Finnish authorities that infringement proceedings against Finland would be issued if use of VERLADOS did not cease.
Viiniverla sought annulment of the EC decision from the Finnish Market Court (FMC) arguing that use of VERLADOS did not lead to any evocation or misuse of the CALVADOS GI and the FMC sought a preliminary ruling from the CJEU on the answers to three questions.
Judgment of the CJEU
FMC question 1: When assessing whether use of VERLADOS leads to evocation of the CALVADOS GI, should reference be made to the average consumer who is reasonably well informed, observant and circumspect?
CJEU response: The CJEU ruled that a GI identifies a product from a country, region or locality where a given quality, reputation or other characteristic is attributable to that geographical origin. GI's are effective across the EU and are protected from evocation even if the true origin of the product is indicated or the GI is accompanied by an expression such as "like", "type", "style", "made", "flavour" or any other similar term. If a consumer sees a product and it triggers in their mind the product protected by a GI, evocation has occurred. Accordingly and in light of the pan-EU protection offered by a GI, the FMC must consider the reaction of the average consumer, across the EU and not just those residing in Finland.
FMC question 2: When considering evocation, what importance should be given to the facts that VERLA is part of Viiniverla's name; is likely to be recognised by Finnish consumers as the name of the Finnish village; sales of VERLADOS amount to only a few hundred litres on average per year, sold in the winery's own restaurant and in a limited amount to Finnish state officials; and VERLADOS and CALVADOS share just one syllable in common?
CJEU response: The CJEU ruled that these facts are irrelevant. Evocation arises where the products are similar in appearance and the names are identical (in that they consist of and end in the same two syllables). It was accepted that the products at issue were similar. Both names consist of eight letters, four of which are identical, share the same number of syllables and end in the syllable "dos". It is also relevant to take into account any evidence that suggests the adoption of VERLADOS was not fortuitous. If evocation arises, a GI protects against evocation throughout the EU. Therefore use in a single member state does not avoid evocation. Further, it is not necessary for confusion to arise for evocation to exist since it does not matter if the public associate the products with each other and nor is it necessary for the trader to take unfair advantage of the reputation of the product protected by the GI.
FMC question 3: If evocation has occurred, may use of VERLADOS nevertheless be authorised on the basis that Finnish consumers are unlikely to imagine that VERLADOS is produced in France?
CJEU response: The CJEU ruled that even though there is no risk of confusion, use of VERLADOS may not be allowed, since on the basis of the above, it gives rise to evocation of the CALVADOS GI.
This decision provides welcome guidance on the question of evocation of a protected GI. The pan-European nature of a GI is reinforced and serves as a reminder that confusion or deception are not necessary and even low level sales of a product in a single member state may be prohibited on the basis of a GI if evocation of a GI has occurred.
Case details at a glance
Jurisdiction: European Union
Decision level: Court of Justice of the European Union
Parties: Viiniverla Oy (Viiniverla) v Sosiaali-ja terveysalan lupa-ja valvontavirasto, (Sosiaali)
Date: 21 January 2016
Full decision: http://dycip.com/c-7515