Bubble Trouble For Names Similar To Champagne, EU Court Rules

• Published date: 12 January 2022
• Subject Matter: Consumer Protection, Intellectual Property, Litigation, Mediation & Arbitration, Consumer Law, Trademark, Trials & Appeals & Compensation
• Law Firm: aera
• Author: Monika Colak and Philippe Benjamin Skow

In the recent EU case C-783/19, a Spanish tapas bar chain had used CHAMPANILLO in its name, why Champagne producers had brought action. The EU Court clarified the scope of protection and found that there was significant similarity between the name CHAMPANILLO and the world-famous Champagne protected by EU law due to its origin. New and interestingly, a service provider's use of a name similar to names protected due to their special origin was deemed an infringement.

Background

EU law protects certain names for food and beverages with a specific designation of origin, such as Parmegiano Reggiano, Feta and Champagne. Other producers' uses of such names may breach EU law. In 2017 for instance, the EU Court ruled that the supermarket chain Aldi's Christmas special CHAMPAGNER SORBET in Germany had gone too far. Currently there is a legal battle in the EU concerning whether PROSEK for the Czech sweet wine should be allowed to be registered in the EU, Italy claiming it would do damage to the protected name for the famous Italian sparkling wine PROSECCO.

The Facts

In the recent controversial EU trademark case C-783/19, an owner of 5 tapas bars in Spain used the sign CHAMPANILLO (which in Spanish means 'little champagne') to designate and promote his establishments. In his advertising, he used an image of two clinking champagne glasses containing a sparkling beverage as shown below.

An organisation safeguarding interests of champagne producers (The Comite? Inter professionnel du Vin de Champagne or CIVC) brought action before the Spanish courts, seeking to prohibit the use of the term CHAMPANILLO, the ground being that the use of that sign infringed the protected designation of origin, (PDO) Champagne. The organisation also challenged the use of the name CHAMPANILLO on social media and in the domain name champanillo.es.

A Court in Barcelona requested the EU Court of Justice to clarify EU's law scope of protection. Guidance was sought in relation to whether use of the term champanillo designating services (in contrast to products) fell under the scope of protection offered to the protected designation of origin in relation to so-called evocation. Evocation generally means the act of bringing or recalling a feeling, memory, or image to the conscious mind.

The Law

The applicable law in the case was the Regulation establishing a common organisation of the markets in agricultural products (Regulation (EU) No 1308/2013). That regulation is intended to assure consumers...