Champagne Producers Toast CJEU Decision Affirming Trade Mark Protections Under PDO

September 23, 2021 Advisory

The Court of Justice of the European Union (CJEU) has reaffirmed the importance and scope of protection afforded to trade marks under the Protected Designation of Origin (PDO) in a decision made earlier this month.

Background

The body responsible for protecting the interests of champagne producers, Comité Interprofessionnel du Vin de Champagne (CIVC), initially brought two opposition claims in the Oficina Española de Patentes y Marcas (the Spanish Patent and Trademark Office) against the GB Group (GB), a Spanish entity that operates tapas bars in Spain. GB marketed CHAMPANILLO (a frothy drink) using a sign on its leaflets and social media accounts that portrayed two cups filled with the drink “clinking” together. The opposition claims were upheld, and GB ceased its marketing in 2015.

Barcelona Commercial Court

CIVC requested an order that GB must cease using the CHAMPANILLO name altogether, including its domain name champanillo.es. GB’s defence was that there was no element of confusion between its name and the PDO “Champagne”, and that it never had any intention to exploit the reputation of the latter. The Juzgado de lo Mercantil de Barcelona (Commercial Court of Barcelona) ruled in GB’s favour, highlighting that GB’s drink was nonalcoholic and that it attracted a different consumer to that interested in Champagne. On this basis, it was not seen as an infringement. CIVC appealed the decision, and the case was referred to the CJEU for clarification on PDOs and the extent of their protection.

CJEU

Specifically, the CJEU was referred four questions.

The first question asked whether the scope of protection of PDOs covered services which could be seen as linked to the PDO product, and not just products deemed as similar. The CJEU confirmed the answer was “yes”: if a service can be viewed as profiting from the reputation assigned to a PDO product, then this service cannot be permitted. Indeed, it would defeat the objective pertaining to the PDO product.

Questions two and three related to the assessment of an “evocation” (broadly speaking, the act of bringing or recalling a feeling, memory or image to the mind) of a PDO within the meaning of Article 103(2) of EU Regulation No. 1308/2013. In other words, the court was asked whether it is a requirement that the offending product/service is identical or sufficiently similar to the product protected by PDO in order to satisfy evocation. The CJEU found that the only criteria necessary to do this is if the image that was brought to the attention of the average consumer triggered in that person’s mind the product protected by the PDO, bearing in mind that the consumer is normally informed and reasonably attentive. In essence, the offending product or service does not necessarily need to be identical or sufficiently similar to the product in question.

The fourth question also concerned evocation within the meaning of the same Regulation cited above, and whether there must be an element of ‘unfair competition’ present in order to constitute evocation. The court found that unfair competition was not a vital component and did not necessarily fall within the meaning of evocation, given that the concept of unfair competition differs nation-by-nation.

As a result of the CJEU’s findings above, it was found that CHAMPANILLO and its associated figurative sign did infringe the rights pertaining to the “Champagne” PDO.

This case highlights the extensive scope of protection that is afforded to products covered by PDOs and puts a cork in the plans of anyone thinking of concocting and marketing their own Champagne brand that is unrelated to the region.

Case: C-783/19, Comite Interprofessionnel du Vin de Champagne v. GB.

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