23/12/2015 – Clarifications on the exhaustive character of the EU system of PDO/PGI protection (Ruling on the Trademark PORT CHARLOTTE)

In November, the General Court of the EU (Fourth Chamber) ruled on case T-659/14 (“Instituto dos Vinhos do Douro e do Porto” – IVDP, the public body in charge of the protection of the GI Porto, v. the Office for the Harmonization in the internal Market – OHIM), concerning the trademark “PORT CHARLOTTE”. Such trademark, first applied for alcoholic beverages (class 33 in the Nice classification), later restricted to goods corresponding to the description “whisky”, had been registered by the company Bruichladdich Distillery Co. Ltd.

In 2011, the IVDP had filed an application for a declaration of invalidity of the trademark at issue, under the relevant articles of the Community Trade Mark Regulation (CTMR). In support of this, the IVDP claimed that the appellations of origin porto and port were protected in all the EU Member States by several provisions of the Portuguese law on GIs as well as by Article 118m(2) of Council Regulation (EC) No 491/2009 establishing a common organisation of agricultural markets. The cancellation division of OHIM first, and the Fourth Board of appeal later (Case R 946/2013-4), rejected the application of invalidity. In particular, the OHIM considered that the EU GIs Regulations, including the one applicable to GI wines, establish a uniform and exhaustive system of protection. As a result, national laws cannot be invoked against a trade mark application conflicting with a given GI (OHIM Guidelines part C section 4 page 11

In so far as the applicant relied on the reputation of those designations of origin within the meaning of Article 118m(2)(a)(ii) of Regulation (EC) No 491/2009, the Board of Appeal found that the contested mark neither ‘use[d]’ nor ‘evoke[d)’ the geographical indications ‘porto’ or ‘port’, so that it was not necessary to ascertain whether they had a reputation.

The General Court annulled the decision of the OHIM Board of Appeal founding that the relevant national law may supplement the EU legislation. The Court considered that the OHIM failed to apply the relevant rules of Portuguese law as “The question of the extent to which a sign which is protected in a Member State confers the right to prohibit the use of a subsequent trade mark must be examined in the light of the applicable national law”. This decision – which on the issue of whether the EU system of PDO/PGI protection has an exhaustive nature – differs from others concerning PDO and PGI for agricultural products and foodstuffs (e.g.: C-478/07, Bud) – will affect the established practice of the OHIM.

Read the full Court’s judgment (see in particular paragraphs 44-47-49)


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