Case C‑56/16 P
European Union Intellectual Property Office (EUIPO)
v
Instituto dos Vinhos do Douro e do Porto IP
(Appeal — EU trade mark — Regulation (EC) No 207/2009 — Article 8 (4) and Article 53 (1) (c) and (2) (d) — EU word mark PORT CHARLOTTE — Application for a declaration of invalidity of that mark — Protection conferred on the earlier designations of origin ‘Porto’ and ‘Port’ under Regulation (EC) No 1234/2007 and under national law — Exhaustive nature of the protection conferred on those designations of origin — Article 118m of Regulation (EC) No 1234/2007 — Concepts of ‘use’ and ‘evocation’ of a protected designation of origin)
Summary — Judgment of the Court (Second Chamber), 14 September 2017
Agriculture—Uniform legislation—Protection of geographical indications and designations of origin for agricultural products and foodstuffs—Regulation No 1234/2007—Uniform and exclusive system of protection
(Council Regulations No 510/2006 and No 1234/2007, as amended by Regulation No 491/2009)
Agriculture—Uniform legislation—Protection of geographical indications and designations of origin for agricultural products and foodstuffs—Regulation No 1234/2007—Establishment of a national-law system for indications of geographical provenance—Whether permissible—Condition—Exclusion of designations of origin attributed to wines
(Council Regulation No 1234/2007, as amended by Regulation No 491/2009, Art. 118b and 118m)
Agriculture—Uniform legislation—Protection of geographical indications and designations of origin for agricultural products and foodstuffs—Regulation No 1234/2007—Protection of registered names—Protection of the reputation of a designation of origin or geographical indication against exploitation—Assessment as to whether there is infringement—Criteria
(Council Regulation No 1234/2007, as amended by Regulation No 491/2009, Art. 118m(2)(a)(ii))
Agriculture—Uniform legislation—Protection of geographical indications and designations of origin for agricultural products and foodstuffs—Regulation No 1234/2007—Protection of registered names—Evocation of a protected geographical indication—Definition
(European Parliament and Council Regulation No 110/2008, Art. 16(b); Council Regulation No 1234/2007, as amended by Regulation No 491/2009, Art. 118m(2)(b))
Although it is true that the system of protection established by Regulation No 1234/2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation) is not identical to that provided for by Regulation No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, those two systems are, essentially, the same in nature, since their objectives and characteristics are similar. The objectives of Regulation No 1234/2007 are similar to those of Regulation No 510/2006 inasmuch as a geographical indication registered pursuant to Regulation No 510/2006 offers consumers a guarantee of quality with regard to the products bearing that indication.
Furthermore, the characteristics of the system of protection provided for by Regulation No 1234/2007 are similar to those established by Regulation No 510/2006. First, the procedure for registering designations of origin and geographical indications under Regulation No 1234/2007 is based on powers shared between the Member State concerned and the Commission, since the decision to register a designation may be taken by the Commission only if the Member State concerned has submitted to it an application for that purpose and such an application may be made only if the Member State has checked that it is justified. Secondly, the fact that the system of protection laid down in Regulation No 1234/2007 and Regulation No 479/2008 on the common organisation of the market in wine is exhaustive in nature is also evidenced by the transitional arrangements for existing national geographical designations.
It follows that, as regards the designations of origin which are protected under Regulation No 1234/2007, that regulation contains a uniform and exclusive system of protection, with the result that there is no need for the Board of Appeal of the European Union Intellectual Property Office to apply the relevant rules of national law which are the basis for the entry of those designations of origin in the E-Bacchus database. Regulation No 1234/2007 precludes the application of a national system of protection for geographical indications that are protected under that regulation.
(see paras 76, 80, 85, 86, 91, 96, 103)
Although Regulation No 1234/2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation) does not, in principle, preclude a simple indication of geographical provenance, that is to say, a name in respect of which there is no direct link between a specific quality, reputation or other characteristic of the product and its specific geographical origin, so that it does not come within the scope of Regulation No 1234/2007, from being protected under national law, the same is not true when the dispute relates to a designation of origin which is attributed to a wine and which is covered by that regulation.
(see para. 107)
The incorporation in a trade mark of a name which is protected under Regulation No 1234/2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation), such as a designation of origin in respect of wine, cannot be held to be capable of exploiting the reputation of that designation of origin, for the purposes of Article 118m(2)(a)(ii) of that regulation, if that incorporation does not lead the relevant public to associate that mark or the goods in respect of which it is registered with the designation of origin concerned or the wine product in respect of which it is protected.
(see para. 115)
There can be ‘evocation’ within the meaning of the EU legislation relating to the protection of designations of origin and geographical indications even in the absence of any likelihood of confusion between the products concerned, since what matters is, in particular, that an association of ideas regarding the origin of the products is not created in the mind of the public, and that a trader does not take undue advantage of the reputation of the protected geographical indication. In that regard, as far as the designation of origin ‘port’ is concerned, the fundamental criterion is that even though the term ‘port’ forms an integral part of the contested mark, the average consumer, even if he is of Portuguese origin or speaks Portuguese, in reaction to a whisky bearing that mark, will not associate it with a port wine covered by the designation of origin in question.
(see paras 123, 124)