Mercosur Agreement, Brazil and Madrid Protocol and "Fack Ju Göhte"


Happy Tuesday!

While having a cup of iced tea (temperatures' consequences), you might want to take a look at the highlights of last week! 

New agreement between the EU and Mercosur

As you might have heard, the EU reached an agreement with the founding members of Mercosur (Argentina, Brazil, Paraguay and Uruguay). Beside easing trade, this agreement will have a positive impact on Geographical Indications. Why is this important? Well, until now some names like “Champagne” or “Jerez” were used in these countries as generic terms when they should not since GI’s protect a specific geographical origin and a reputation, quality or specific characteristics derived from said origin. With this agreement, 357 GI will be recognized and protected from imitation. GIs are important and can entail intricate negotiations in trade agreements! (see the case of the "Queso Manchego" and Mexico).

Brazil adheres to the Madrid Protocol

In a very simplistic way, think of the Madrid Protocol as a ticking box. You file your Trademark application, you “tick” the countries where you want to protect it and you will only have to pay one set of fee (you won’t have to go through the journey of knocking at every national IP Office’s door). You will be saving time and money if you want to protect your trademark internationally. Well, now you can tick Brazil! (don't mix it and talk about Madrid adhering to the Brazil Protocol)

Decision of AG Bodek in “Fack Ju Göhte[1]

Do you think that “Fack Ju Göhte” should be allowed registration as a Trademark? The EUIPO did not believe so since it considered it contrary to “currently accepted principles of morality”. Two important things about the Advocate General’s opinion (preceding the judgment from the Court of Justice of the European Union):

  • Freedom of expression has to be taken into account in the world of Trademarks, even though it might not have the same weight as it has in other matters.
  • “Public policy” and “principles of morality” are two different concepts.
  • Public policy requires a public authorities to set goals that only then can be pursued, requiring then an assessment based on objective criteria (is this goal being pursued? Is it being imped?).
  • Principles of morality are dependent on the values and convictions of a given society at a given time. They are subjective and evolve overtime.

In a nutshell, if the EUIPO wishes to oppose to Trademark registration on the ground that it is contrary to principles of morality, then it will need to properly identify those principles and justify why there is violation. The EUIPO is then held to a higher standard than if it based it on “public policy”. Does this mean “Fack Ju Göhte” will be granted registration? Wait and see!

And that is all for today!

Have an amazing Tuesday!


"News" by Gerard Stolk ( vers la Pâques ) is licensed under CC BY-NC 2.0 

[1] EU:C:2019:553, Advocate General Bodek's Opinion in the case C-240/18 P “Constantin Film Production v. EUIPO”