Champagne Producers Toast CJEU Decision Affirming Trade Mark Protections Under PDO

• Published date: 25 September 2021
• Subject Matter: Intellectual Property, Patent, Trademark
• Law Firm: Armstrong Teasdale
• Author: Mr Zane Shihab and Hannah Cowley

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 Espa'ola 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...