The relevant points about the decision

 In its decision on the appeal by a trade mark owner in an opposition proceeding based on a geographical indication against a German trade mark registration (decision of 30 April 2026; file No. 26 W (pat) 566/22; https://www.bundespatentgericht.de/SharedDocs/Entscheidungen/DE/2026/26566-22_30042026.pdf?__blob=publicationFile&v=1) the court had to deal with the question to what extend Art. 27 of Regulation (EU) 2024/1143 could be cited or applied in opposition proceedings.

 Art. 27 (1) of Regulation (EU) 2024/1143 allows the use of a GI in the name of a processed product or on its labelling, or in its advertising material, if: 

• the processed product does not contain any other product comparable to the ingredient designated by the geographical indication;
• the ingredient designated by the geographical indication is used in sufficient quantities to confer an essential characteristic on the processed product concerned; and
• the percentage of the ingredient designated by the geographical indication in the processed product is indicated in the label.

In the present case, the opposed trade mark only consisted of one word and that word was not identical, but similar to the opposing GI (trade mark: “Prosexxo” vs. opposing GI “Prosecco”). The list of goods of the opposed trade mark included for several classes a disclaimer stating “which include Prosecco compliant with the specifications of the PDO “Prosecco””. 

The court cited several reasons why Art. 27 would not be applicable: 

• First, the opposed trade mark was not identical with the GI in question and did not include any other elements. The wording of Art. 27, however, (“in the name of a processed product”) suggests that the GI in question has to be used in its identical form and together with other elements. In light of this, the court implied that Art. 27 likely requires the use of a GI name that clearly indicates that it is used as an ingredient in the product in question.
• Second, the court held that given in an opposition proceeding the court can only decide based on the information provided in the trade mark register, it cannot decide whether or not the product that the opposed trade mark will be used on contains sufficient amounts of the GI protected produce to ensure that it “confer[s] an essential characteristic on the processed product concerned” as Art. 27 (1) (b) requires.
• Finally, third, some of the goods that the opposed trade mark claimed protection for and that were accompanied by the “ingredient” disclaimer would have included by default ingredients that are comparable to the product that the opposing GI protects and thus contravene Art. 27 (1) (a).    

What should we take away from this decision?

This decision is good news for the GI enforcement. Disclaimers in trade mark applications including a GI name or consisting thereof stating “including [GI name] compliant with the [PDO/PGI – GI name]” are now less likely to be accepted by trade mark offices.

Art. 27 in practice – difficult to handle

This decision also shows the factual and legal difficulties of applying Art. 27 in practice. How do you determine in practice whether or not a GI product confers an essential characteristic on the processed product concerned? De gustibus non est disputandum one used to say in Latin (you cannot argue about taste). For those who would like to get a better idea on the application of this issue in practice I would recommend a read of the Munich Regional Court of Appeal decision in the “Champagner Sorbet” case following the CJEU’s decision, the decision Art. 27 was modelled on (see here: https://www.gesetze-bayern.de/Content/Document/Y-300-Z-BECKRS-B-2021-N-16840?hl=true). The court had to determine whether or not Champagne conferred an essential quality to a sorbet. However, at the time of the decision the product in question had gone out of production for many years. The court had to rely on the recollection of a tasting by a witness who had tasted the product years before the decision.

In light of all of this, one can understand why the court did not feel comfortable to enter into a hypothetical discussion under which circumstances the opposing GI product would confer essential qualities in the sense of Art. 27. 

One may, of course, argue that the court, in fact, would have been obligated to dig a bit deeper here, since even in opposition proceedings the potential use of a trade mark has to be taken into account (see CJEU C-533/06, paras 65-67 – O 2; but also Art. 31 (1) Regulation (EU) 2024/1143 “An application for the registration of a trade mark the use of which would contravene Article 26 shall be rejected …”). At the same time one wonders whether this requirement applies here, given Art. 27 represents a defence for the owner of the opposed trade mark and thus concerns – at least not directly – the question of infringement.

The issues with disclaimers:

So, how about amending an “ingredient disclaimer” to accommodate the requirements of Art. 27? 

Let’s remind ourselves briefly of the requirements on the clarity and understandability of a list of goods and services for a trade mark (CJEU C 307/10, para 65 - Chartered Institute of Patent Attorneys/IP Translator): “the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark”.

While one could argue that based on this requirement any GI related disclaimer should not be accepted in a trade mark application, there can be little doubt that this requirement for clarity is not met with a disclaimer that can only be verified by tasting and possibly further analyzing a product that bears the trade mark in question. Only such an analysis would allow one to determine whether or not the product passes the Art. 27 test.

Conclusion

The legal issues around “GI disclaimers” have been in legal contention for quite a while now. The General Court’s “Nero Champagne” decision certainly was an important milestone. 

This decision shows once more the wide range of legal problems connected to those disclaimers. But it also should be encouraging for GI producer groups not to accept these disclaimers. There is certainly more than one angle to this problem.”