Homonymy Between a Foreign Appellation of Origin and an Argentine Geographical Indication

On February 24, 2011 the Federal Court of First Instance for Administrative and Contentious Matters in re "Consejo Regulador Denominación de Origen Calificada RIOJA vs EN-Instituto Nacional de Vitivinicultura (National Institute of Viticulture-INV-)-Resolution C.32/02" rejected the plaintiff’s claim on the grounds that there is no likelihood of confusion between the Geographical Indication “LA RIOJA ARGENTINA” and the Appellation of Origin “RIOJA” (from Spain).

The Regulatory Council of the Qualified Appellation of Origin RIOJA (RIOJA Council) initiated court action against INV to contest Resolution C 32/2002 issued by INV on November 14, 2002 which acknowledges “LA RIOJA ARGENTINA” as a GI.

The Rioja Council in particular remarks that the RIOJA Appellation of Origin (AO) is one of the seven most prestigious historical AOs in Europe, which was declared "qualified". The Council directs and controls the production, manufacture and quality of the RIOJA wines, and watches over the prestige of the AO nationally and internationally.

The Council reviews the Argentine legislation related to the protection of GI and AO for wines and vinic products and in particular mentions Resolution C 32/2002, issued by INV, which recognizes the GI “LA RIOJA ARGENTINA”. The Council also points out that Decree No. 57/2004 regulating the law protecting GI and AO for wines ratifies a previous resolution issued by INV (No. 23/1999) which approves a registry of geographical areas which may constitute GI, including, among others, LA RIOJA.

According to the Council, those resolutions violate the provisions of Law No. 24,118 which ratifies the bilateral agreement for the reciprocal protection of investment, executed on October 3, 1991 between Argentina and Spain.

In turn, the INV also reviews the Argentine legislation involved and states that our legal system is in accordance with the TRIPS Agreement.

After examining the case, the Court of First Instance mentioned that the validity of the act -which should be issued in harmony with the Argentine legal system-, is one of the pillars of national administrative law. That presumption exists unless the act is declared invalid.

The Court also reviews the legislation involved and mentions that Resolution C 32/2002 was issued following the regulations foreseen by the Trips Agreement, in particular the regulations related to the cases of homonymy as in the present case.

The Court considered that the addition of the word ARGENTINA to the Geographical Indication LA RIOJA is enough to distinguish such GI from the Appellation of Origin RIOJA.

Furthermore, there was no evidence showing confusion among consumers.

According to the Court, the term ARGENTINA is sufficient to differentiate the GI and AO involved. In addition, ARGENTINA is the name of the country which clearly indicates that the products come from the Argentine Republic.

Considering that confusion was not proved and in view of the applicable legislation mentioned above, the claim is dismissed.

The decision is not final since it was appealed by the plaintiff. It now remains for the Court of Appeals to decide which will be the precedent to consider in homonymy cases.