In 2017, a Czech company had filed the European Union trademark (EUTM) application No. 16.471.922 for the word mark “Champagnola”. Rejected in class 43 (food and drink services), it was published for opposition in class 30 (bread, pastry, baking preparations, …) and 40 (bakeries, production of semi-finished bakery and confectionery products and the baking thereof, bakery services and services related thereto, …). On the same year, the Comité Champagne had opposed the application on the grounds of Article 8.6 of EUTM Regulation, the provisions of EU Regulations and French national law. “Champagne” is recognized as PDO by virtue of Article 107(1) of Regulation (EU) No 1308/2013. In 2019, the EUIPO Opposition Division had rejected the opposition and the Comité Champagne had filed a notice of appeal.
With 17 April decision, the Board of Appeal finally upheld the Comité Champagne initial opposition and stated that the contested EUTM application must be rejected for all the goods and services in Classes 30 and 40, because “Champagnola” represents an evocation of the PDO Champagne. The reasons given by the Board of Appeal are extremely interesting, because clarify once again the extent of GIs evocation in the EU legal framework:
- First of all, the Board of Appeal said that the Opposition Division has misconstrued the provisions of Regulation No 1308/2013. That Regulation confers protection against identical use or evocation of protected names, and this either with respect to comparable products (wine in the present case), or other goods and services which are not comparable ones of the protected name only if the contested sign exploits the reputation of the protected names.
- The Opposition Division contested decision made a mistake in linking evocation with an evaluation of the comparability of goods and services. Evocation can eb established with respect to both comparable and non-comparable goods (or even services). It improper to mix this condition with considerations which would correspond to the ‘link between the goods’ under Article 8(5) EUTMR.
- The provisions providing protection in Regulation 1308/2013 must be read in the same way as the parallel conditions in Article 8(5) EUTMR, namely that it is not required to prove actual use resulting in actual harm or detriment of the PDO reputation.
- As a consequence, when dealing with an opposition based on a PDO which has a reputation, exploitation of that reputation does not require prior actual use of the contested sign by the trade mark applicant. In this respect, guidance can be obtained from the parallel provision in Article 8(5) EUTMR regarding unfair advantage taken from a reputation: It is for the proprietor of the earlier right to adduce evidence enabling the conclusion to be drawn that an injury is probable, in the sense that it is foreseeable in the ordinary course of events. There must however be prima facie evidence of a future risk, which is not hypothetical, that an injury will occur, on the basis of deductions founded on an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case.