It has been widely reported in the Irish media that the Trade Union Unite is launching a test case in an attempt to force the owners of the Trade Mark WATERFORD to have crystal glass sold under that trade mark made exclusively in Waterford. Some crystal items are still made in Waterford but the vast majority of glass products are manufactured outside of Ireland. The case is apparently to be brought before The European Union Trade Marks Office (OHIM) in Alicante, Spain.
No indication as to the legal basis of action has been given but references have been made to “significant legal and commercial precedent for a successful action against the making of products in other regions, such as Champagne in France and Parma ham in Italy”. In 2003 the European Court of Justice held that Parma ham could not be sliced and packaged for sale outside the Italian region where it is produced. A consortium of producers had taken action against the supermarket chain Asda and its supplier, which at that time sliced and packaged Parma hams in Wiltshire in England. The Champagne wine making community in France has also, on a number of occasions, succeeded in preventing use of the name Champagne on sparking wine not produced in the Champagne wine producing region in France.
The Trade Mark WATERFORD as applied to glass, however, is not in a similar position to the CHAMPAGNE or PARMA designations. The latter fell under the three EU schemes which grant protection for specific names,namely PDOs (protected designation of origin), PGIs (protected geographical indication) and TSGs (traditional speciality guaranteed) which protect names of quality agricultural products and foodstuffs.
- PDOs– protect agricultural products and foodstuffs which are produced, processed and prepared in a given geographical area using recognised know-how.
- PGIs– protect agricultural products and foodstuffs closely linked to the geographical area. At least one of the stages of production, processing or preparation takes place in the area.
- TSGs– protect products which have a traditional character, either in the composition or means of production.
The schemes protect product names from misuse and imitation and help consumers by giving them information concerning the specific character of the products. Among Irish names registered under the above categories are TIMOLEAGUE BROWN PUDDING (PGI) and IMOKILLY REGATO (PDO) while there is a PGI application pending for WATERFORD BLAA for a bakery product. However, the schemes relate only to certain foodstuffs and wines and not to products such as crystal glass and Unite can therefore find little solace in the Champagne and Parma ham precedents.
It is likely therefore that Unite will be applying to revoke the existing Community registrations of the Trade Mark WATERFORD under Article 51(c) COUNCIL REGULATION (EC) No 207/2009 of 26 February 2009 which states that a Community registration may be revoked if, in consequence of the use made of it by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services. Unite’s argument under that Article would be that persons who purchased glass under the Trade Mark WATERFORD would expect the products to be manufactured in Waterford city and would be deceived if the products were to be manufactured elsewhere. The WATERFORD trade marks, when originally registered, contained a correct allusion to the geographical nature of the goods, namely that the glass products emanated from Waterford city but Unite will argue that as there has since been a change in the source of the products, the Trade Mark WATERFORD is therefore likely to mislead the public as to the geographical origin of the glass products currently sold under the trade mark.
However, even if Unite is successful in such an action and the WATERFORD trade mark registrations are either struck off or the protection under the trade marks is restricted to goods manufactured in Waterford, this will not “force the current owners of Waterford Crystal to repatriate manufacturing of the brand to the city” as alleged. The owners may eventually have restricted protection under their Trade Mark WATERFORD, and that is by no means certain, but neither Unite nor the OHIM in Alicante can force the owners to revert to manufacturing in Waterford.
The glass would therefore seem to be half empty for Unite.
For further information please contact Cliff Kennedy by email at firstname.lastname@example.org