European Union: Champagne producers toast CJEU ruling upholding trademark protection under PDO
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The Court of Justice of the European Union (CJEU) reaffirmed the importance and scope of the protection granted to trademarks under the protected designation of origin (PDO) in a decision made earlier this month.
The body responsible for protecting the interests of champagne producers, Champagne Wine Interprofessional Committee (CIVC), initially filed two oppositions before 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 flyers and social media accounts that depicted two cups filled with the drink ‘clinking’ together. The opposition claims were upheld and GB ceased marketing in 2015.
Commercial Court of Barcelona
The CIVC requested an order requiring GB to completely cease using the name CHAMPANILLO, including its domain name champanillo.es. GB’s defense was that there was no element of confusion between its name and the AOP “Champagne”, and that it had never intended to exploit the latter’s reputation. The Juzgado de lo Mercantil de Barcelona (Barcelona Commercial Court) ruled in favor of GB, pointing out that GB’s drink was non-alcoholic and appealed to a different consumer than one interested in champagne. On this basis, it was not considered an infraction. The CIVC appealed the decision and the case was referred to the CJEU for clarification on the PDOs and the scope of their protection.
Specifically, the CJEU was referred four questions.
The first question asked whether the scope of the protection of PDOs covered services that could be considered related to the PDO product, and not only some products considered similar. The CJEU confirmed that the answer is “yes”: if a service can be considered to benefit from the reputation attributed to a PDO product, then this service cannot be authorized. Indeed, that would run counter to the objective relating to the PDO product.
Questions two and three concerned the assessment of an “evocation” (in the broad sense, the act of evoking or recalling a feeling, a memory or an image in the mind) of a PDO within the meaning of Article 103(2) of EU Regulation 1308/2013. In other words, the court was asked whether it was required that the incriminated product/service be identical or sufficiently similar to the product protected by the PDO to satisfy the evocation. The CJEU held that the only criterion necessary to do so is whether the image which has been brought to the attention of the average consumer has triggered in that person’s mind the product protected by the PDO, bearing in mind bearing in mind that the consumer is normally informed and reasonably observant. Essentially, the offending product or service need not be identical or sufficiently similar to the product in question.
The fourth question also related to the evocation within the meaning of the aforementioned regulation and to the question of whether an element of “unfair competition” had to be present to constitute the evocation. The court held that unfair competition was not an essential element and did not necessarily fall within the meaning of the evocation, since the concept of unfair competition differed from nation to nation.
Following the findings of the CJEU above, it was found that CHAMPANILLO and its associated figurative sign infringed the rights relating to the PDO “Champagne”.
This case highlights the extent of the protection granted to products covered by PDOs and puts a damper on the plans of anyone planning to concoct and market their own brand of Champagne unrelated to the region.
Case: C-783/19, Interprofessional Committee for Champagne Wine v. GB.
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