Designations of Origin and Geographical Indications enjoy unquestionable reputation and selling power. As in any other reputed signs or trademarks, these quality distinctions are often damaged by counterfeiting, with dire consequences for the operators which are members of the Designation of Origin or Geographical Indication and for the Regulatory Boards themselves (the bodies managing these quality distinctions). This is the case of the Protected Geographical Indication (hereafter, PGI) “Asparagus of Navarra” which, in the last years, has been facing the unfair competition of companies that used to commercialize asparagus not protected by such a PGI –and in most of the cases coming from China or Peru– under deceptive labels and packaging which reproduced the term ‘Navarra’. These companies justified such a practice on grounds such as their registered address (established in Navarra), their company name (which included said geographical term) or even the ownership of registered trademarks including the term “Navarra”.
Under such circumstances, the Regulatory Board of the PGI “Asparagus of Navarra” filed a lawsuit against the infringement of the exclusive rights arising from the PGI and the unfair competition. The civil action, filed under the legal counsel of Aitor Pomares of the firm Berenguer & Pomares abogados, ended up with a first instance Judgement (of March 13, 2011 of the Commercial Court of Logroño) declaring the infringement of the PGI and the commission of unfair competition acts, ordering the defendant to refrain from using the term ‘Navarra’ and to recall from the market all the infringing products, plus declaring the invalidity of the registered trademark “CORONAS DE NAVARRA” –under which the illicit activity had been committed–. However, the Judgement denied the right of the Regulatory Board to get damages given its lack of locus standi for such a claim, in accordance with the position previously held by other Courts. The resolution considered that the Regulatory Board takes no part in the marketplace nor has its economic interests directly affected by the unfair competition and, therefore, did not meet the requirements set forth by the Unfair Competition Act in that respect –although the Regulatory Board is the body composed of all the operators authorised to use the PGI and is legally entrusted with the defence of such a collective right–.
This type of decision, which implies the refusal of the compensation for damages, entailed a severe risk for all the Regulatory Boards because the economic content of said intangible asset –the Geographical Indications– is fully disregarded. These findings might even constitute an incentive for the offenders who, in that moment, were ordered to cease the infringement of the right, but were released from compensating the economic damages, in contrast to the scenario where other intellectual property rights are infringed (i.e. trademarks, designs, patents, etc.).
The Regulatory Board filed an appeal against the aforementioned Judgement in order to have the economic damages and dilution of the “Asparagus of Navarra” compensated. The law firm Berenguer & Pomares abogados plead the genuine participation of Regulatory Boards in the market, mainly through the promotion of the protected good and the control of its quality. Likewise, it was pointed out that the infringement of the PGI entailed a direct damage to the economic interests of the Regulatory Boards, since these bodies are the only ones legally entitled to defend the PGI.
The second instance Judgement (issued by the Audiencia Provincial of La Rioja of September 7, 2012) upheld the arguments of the Regulatory Board, recognizing its locus standi to claim damages and ordering the defendant to pay an important amount as a compensation for the dilution of the reputation of the PGI, and confirmed the rest of the findings of the first instance decision. It has to be highlighted the significance of the award of damages in a case where the offender was acting under a registered trademark.
The view of the Audiencia Provincial has been recently supported by the Commercial Court of Pamplona which, by means of a ruling of July 1, 2013, upheld once again a lawsuit filed by the same Regulatory Board directed against the same kind of acts, ordering the defendant –this time operating under the sign “CONSERVAS TRADICIONALES DE NAVARRA”, the asparagus originating from Peru– not only to cease its misleading practice but also to compensate the Regulatory Board.
This way, it is confirmed the case-law that endorses a most favourable criterion for Designations of Origin and Geographical Indications. In the opinion of Berenguer & Pomares abogados, these cases constitute not only a success for the Regulatory Board of the PGI “Asparagus of Navarra” but also a backup to the rest of Regulatory Boards, since it has been consolidated a significant tool to fight against the fraud which has an important dissuasive effect.
This case in the media:
http://www.elmundo.es/elmundo/2013/10/19/andalucia/1382193651.html
http://www.abc.es/agencias/noticia.asp?noticia=1498149
http://www.diariodenavarra.es/noticias/navarra/mas_navarra/2013/10/18/multa_por_vender_esparrago_peru_china_con_marca_navarra_133825_2061.html
