88. The representative of the European Union said, regarding the second sub-question concerning the level of substantiation required to raise the issue of genericness and of who bore the burden of proving it, he said that substantiation was of interest to all. It allowed identifying the facts and evidence supporting a statement. This was the case among parties to a procedure. His delegation considered that any administrative decision should be motivated. They should contain not only the references to the applicable legislation, but also to the facts, the arguments, and the evidence that had been used to arrive at the decision. Clear and sufficient demonstration by a party making a claim was absolutely essential in order for the other party to have the possibility to bring counter-arguments appropriately. Motivation of a decision was pivotal to permitting informed choices to be made regarding possible legal challenges.
89. He recalled that the European Union had a dual system, on the one hand, a separate GI system of registration and, on the other, a trademark registration system, and therefore he would deal with each system separately.
90. On sub-question 2.a relating to geographical indications for wines and spirits and the examination procedure, in accordance with EU law, a term might be refused GI protection if it was found that it had become the common name of a wine or spirit in the European Union, even if it related to a place or region where the product was originally produced or marketed. That ground of refusal might be examined ex officio by the Commission services. When third parties relied on this ground, they must submit duly substantiated statements. GI applicants might file observations and evidence to counter claims of genericness. In all cases, the final decision adopted by the Commission services must be motivated.
91. With respect to sub-question 2.b, i.e. in case of a challenge of a protected term, he said that a decision by the Commission services finding genericness or failure to find genericness could be challenged in the court within two months after it had been issued or published. It was for the entity challenging the decision to bring any fact or law to establish that the Commission services were wrong. If there was no challenge brought against the Commission services' decision within these two months, the EU Regulations provided that the protected name could not become generic.
92. A similar distinction should be made between the examination procedure before registration and after a protected term was challenged. Firstly, during the examination procedure, under Article 7(1)(b) and (d) of the Community Trademark Regulation, the trademark examiner would notably verify that the mark was not devoid of any distinctive character or did not consist exclusively of signs or indications which had become customary in the current language or in the bona fide and established practices of trade. Likewise, third parties could file observations based on those grounds and should submit any facts, arguments and evidence in support of their statements. The examiner would consider whether the observations were well founded, and, if so, he would invite comments from the trademark applicant, and might subsequently amend his assessment. In all cases, the examiner was required to provide a motivated decision. To substantiate his decision, in addition to the information provided by the parties, he might also refer to EU legally binding acts or to other available tools such as dictionary entries, information found on the Internet, or the ordinary understanding of a term.
93. In the case of a challenge of the registered trademark, cancellation actions (revocation or invalidity) could be initiated on the ground that the trademark had become generic. In that case the burden of proof was on the challenger, which was also the solution proposed by the TN/C/W/52 proposal.
94. In summing up the matter on the sub-question on genericness, he said that in the European Union the authorities competent either for geographical indications or trademarks adhered to the principle contained in the TN/C/W/52 proposal with regard to the substantiation of genericness. He said that the proposal did not touch upon the substance of the decision as those decisions were left to domestic authorities. His delegation understood and welcomed the fact that some Members might have already applied the principle enshrined in TN/C/W/52. The objective of TN/C/W/52 was however to ensure that this principle, which the European Union considered an essential element of consistent application of law and the only manner to fulfil the mandate, would be applied in the legal systems of all Members. He said that if the system of genericness substantiation as proposed in TN/C/W/52 was already being applied in some Members, it should facilitate their acceptance of it.
