ABOUT THE RECENT DECISIONS OF THE EUIPO PROTECTING THE GEOGRAPHICAL INDICATION ‘CAFÉ DEL CAUCA’

Geographical indications (‘GIs’) constitute a key tool for the protection and preservation of products that, due to their geographical origin and method of production or processing, possess unique characteristics. It is common for third parties to attempt to exploit the tradition and recognition that a GI has acquired over time through the unauthorized use and/or registration of similar or even identical expressions for the same or similar products. Several cases have been observed concerning Colombian GIs, such as ‘Café de Colombia’ or ‘Sombrero Vueltiao’ (which is part of the geographical indication ‘Tejeduría Zenú’), used or registered by unauthorized third parties to falsely evoke that origin and those recognized characteristics.

Industrial Property Offices play a crucial role in the protection and preservation of GIs by determining, within their jurisdiction, whether a trademark application should be rejected for being identical or similar to a recognized geographical indication.

In this regard, it is worth commenting on two recent decisions (cases R0825/2023-5 and R0826/2023-5) of the Fifth Board of Appeal of the European Union Intellectual Property Office (‘EUIPO’), by means of which two trademark applications for ‘CAVCA’ (one a word and the other a word & design mark) were partially rejected. These marks were applied for by the Polish company CAVCA SP z.p.p., for products and services related to coffee in Classes 11, 35, and 43. The Board considered that the expression ‘CAVCA’ evokes the Colombian geographical indication ‘Café del Cauca,’ which is protected in the European Union.

These decisions are highly relevant for Colombia for two main reasons. Firstly, because it is the first time that the EUIPO Boards of Appeal (being the final and highest instance within the entity) rejects a trademark based on a regional Colombian coffee GI. While it had done so regarding the ‘Café de Colombia’ GI, it had not for any other coffee GIs from the various regions of Colombia which are also protected in the EU.

Secondly, the EUIPO based the rejections on the provisions of the Free Trade Agreement between Colombia and Peru, on one side, and the European Union on the other, effective since 2013. This agreement precisely acknowledges the protection of mutual geographical indications in their respective territories. Initially, the trade agreement included only the ‘Cholupa del Huila’ as a Colombian GI protected in the EU. However, Colombia has been requesting the inclusion of additional GIs (as stipulated by the treaty), and in 2018, the EU recognized the GIs for ‘Café del Cauca’, along with ‘Café de Nariño’, ‘Café del Huila’, ‘Bizcocho de Achira del Huila’, ‘Queso Paipa’, ‘Queso Caquetá’, ‘Clavel de Colombia’, ‘Rosa de Colombia’, and ‘Crisantemo de Colombia’.

While indeed the Boards of Appeal had previously based other trademark rejections on trade agreement provisions related to geographical indications, this marks the first time of doing so concerning Colombian GIs recognized through a trade agreement (to note that the ‘Café de Colombia’ GI was not recognized under the mentioned Free Trade Agreement but had been protected earlier through proceedings before the European Commission in 2006).

The Board thus conducts a detailed analysis of Article 210 of the treaty, which explicitly prohibits the unauthorized use of protected geographical indications for identical or similar products. It concludes that the trademark applications for ‘CAVCA’ should be rejected for ‘coffee machines’ in Class 11, ‘rental of vending machines’ in Class 35, and ‘cafeteria services’ in Class 43. The Board, however, keeps the applications alive for ‘catering services,’ deeming them unrelated to the coffee products designated by the ‘Café del Cauca’ GI.

These cases demonstrate the benefit of free trade agreements in ensuring mutual intellectual property protection in the involved territories, particularly when one of the subscribing countries is not part of other international agreements or conventions facilitating and extending the specified protection of intangibles.

 

This is precisely the case with geographical indications, as Colombia is not yet a party to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications. This agreement allows the international registration of GIs before the World Intellectual Property Organization, subsequently protecting them in different contracting parties. 

Adhering to this agreement would undoubtedly be highly beneficial for the country, facilitating the recognition of Colombian geographical indications abroad.

Meanwhile, the Colombian Government should continue advocating for the inclusion, in trade agreements, of the remaining geographical indications already declared in Colombia and not yet recognized in those territories.

The discussed decisions can be reviewed here.

Salvatore Marcenaro

Trademarks Director

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