The General Court of the European Union has ruled today, in Case T-239/23, that the word mark “NERO CHAMPAGNE” cannot be registered as an EU trade mark for wine (or related services), even if the product complies with the specifications of the protected designation of origin (‘PDO’) “Champagne”.
The case arose from a 2019 application by Italian company Nero Lifestyle to register the name. The Comité interprofessionnel du vin de Champagne and INAO opposed the registration, arguing it would unfairly exploit the reputation of the PDO “Champagne” and would be liable to mislead the relevant public.
The Opposition Division, followed on appeal by the Second Board of Appeal (‘BoA’) of EUIPO, upheld the opposition and rejected the trade mark application in respect of goods that did not comply with the specifications of the PDO “Champagne”, as well as for services unrelated to Champagne wine. However, the opposition was dismissed – and the trade mark consequently accepted – for Champagne wine and related services. The General Court annulled the BoA’s decision.
The Court recalled that the registration of trade marks which include a PDO must be refused if they take unfair advantage of the PDO’s reputation or are liable to mislead consumers. It also clarified that this applies even when the trade mark is applied for goods complying with the PDO’s specifications and/or services related to such goods. It also held that, while there is a presumption that trade marks which include a PDO and cover only goods complying with the specifications of that PDO do not take unfair advantage of its reputation, this presumption is rebuttable. The BoA incorrectly applied a non-rebuttable presumption that such marks are acceptable, or at the very least failed to adequately address the arguments put forward by the opponents to establish that use of the mark in question would indeed unduly exploit the reputation of the PDO.
In this regard, the judgment rejects EUIPO’s so-called “limitation theory”, according to which a trade mark that includes or evokes a PDO is ipso facto acceptable, provided that the goods for which the mark is applied are limited to products complying with the PDO’s product specifications or to related services.
Additionally, the Court noted that the term “Nero” – commonly associated with Italian grape varieties and meaning “black” in Italian – might mislead consumers into thinking that the product is a “black champagne,” which would not be consistent with the PDO’s specifications (as champagne can only be white or rosé), or that it is made exclusively from pinot noir or from specific grape varieties, such as “Nero d’Avola” or “Nero Buono”.
In this case, the EU General Court granted oriGIn leave to intervene to support Comité Champagne and INAO. It recognizes oriGIn’s direct interest in the outcome of the dispute in its capacity as global alliance and in light of its objective to protect GIs internationally.
The judgment is certainly welcome for the protection of GIs in the EU. However, oriGIn would have preferred an even bolder outcome with respect to the restrictions to register GIs as part of a trade mark. In this respect, the judgement incorrectly states that oriGIn admitted at the hearing that, subject to certain conditions, a PDO may form part of a trade mark. oriGIn intends to request the rectification of this clerical error, as it argued that Article 103(1) of Regulation No 1308/2013 refers to the right to use a PDO as a PDO and does not allow third parties to register a PDO as part of a trade mark.
The General Court judgment in Case T-239/23 is available here.
For more information on oriGIn direct involvement in enforcement cases, please consult the dedicated section of our website.
