Champagne v Champanillo: CJEU clarifies scope of protection afforded to PDOs
Par Richard Milchior, le 2 novembre 2021
Article publié dans World Trademark Review
– The protection afforded by a PDO extends to the use of signs designating not only products, but also services
– In order to determine whether there is an ‘evocation’ of a PDO, it is not necessary to establish that the product covered by the PDO and the product/service identified by the sign are identical or similar
– The key criterion is whether, when a consumer is confronted with the sign, the image triggered in their mind is that of the product covered by the PDO
On 9 September 2021 the Court of Justice of the European Union (CJEU) issued its decision in Comité Interprofessionnel du Vin de Champagne v GB (Case C-783/19), following a request for a preliminary ruling by the Court of Barcelona (Spain) concerning the interpretation of Article 103 of Regulation 1308/2013 in a case concerning the protected designation of origin (PDO) ‘Champagne’.
GB had been using the sign CHAMPANILLO to advertise its tapas bars on social media and flyers. It used the image of two glasses containing a sparkling beverage as a graphic support to advertise its premises.
Following a request by the Comité Interprofessionnel du Vin de Champagne (CIVC), the body responsible for safeguarding the PDO ‘Champagne’, the Spanish trademark office refused twice to register the mark CHAMPANILLO. GB sold a sparkling beverage named ‘Champanillo’ up to 2015, but stopped following a request by the CIVC. The CIVC then tried to obtain an injunction from the Spanish courts to restrain GB from using the sign CHAMPANILLO. The action was rejected by the Commercial Court of Barcelona. This decision was appealed, which led the Appeal Court to refer four questions to the CJEU for a preliminary ruling.
The CJEU first mentioned that one cannot apply simultaneously the rules of the Union protecting a PDO and the Franco-Spanish Convention of 1973 on the same topic; only the Union rules must be applied.
The referring court questioned the interpretation of Article 13 of Regulation 510/2006 and Article 103 of Regulation 1308/2013, but the CJEU stated that neither is applicable to wine products. However, the contents of the pertinent part of Regulation 1151/2012 were comparable to those of Regulation 1308/2013, and the principles defined in any regime of protection of geographical denominations and indications are applicable to the others.
In addition, the CJEU did not know whether, for a time-related reason, one should have applied Regulation 1308/2013 or the previous regulation (Regulation 1234/2007); however, the relevant provisions having the same wording in both, an interpretation made on the basis of the previous provisions was still applicable.
The CJEU then went on to explain how to distinguish between Articles 103(2)(a) and (b) of Regulation 1308/2013: Sub-section (a) concerns a situation where the PDO is protected against use of a sign which is identical or similar, phonetically or visually, while Sub-section (b) protects against suggestions or evocations. They must be clearly distinguished when applied by a court. In the present case, CHAMPANILLO was sufficiently distinct from ‘Champagne’ to decide that it could not fall under Sub-section (a); therefore, the questions referred by the Spanish courts should be answered only by interpreting Sub-section (b).
By the first question, the referring court sought to ascertain whether the protection afforded by a PDO concerns both products and services. It was clear, taking into account the wording of Sub-section (b) of Article 103(2), that a PDO provides protection against use by a product or service. This was confirmed by Recital 97 of Regulation 1308/2013 and Recital 32 of Regulation 1151/2012 concerning the quality system of agricultural products, and was also in line with the objectives of Regulation 1308/2013. Therefore, the protection granted by this provision is wide and concerns any use aiming to benefit from the reputation of one of the products covered by a PDO. Any interpretation that would not allow the protection of a PDO when the contested sign designates a service would not be consistent with such wide protection.
The CJEU then combined the second and third questions to decide whether Sub-section (b) can be construed as meaning that the ‘evocation’ referred to in this provision implies that the product covered by the PDO and the product or service designated by the contested sign must be identical or similar, and whether it must be determined based on objective factors to establish whether there is a significant incidence on the average consumer.
The CJEU decided that the key test was whether, when a consumer is confronted with the contested sign, the image triggered in their mind is that of the product covered by the PDO. This should be determined by the national judge, taking into account the partial incorporation of the PDO in the contested sign, or a visual, phonetic or conceptual proximity between the PDO and the sign. However, the CJEU added that the link between the sign and the PDO must be sufficiently direct and unambiguous.
Such link must be assessed through a global appreciation, but does not require that the product covered by the DPO and the product or service covered by the contested sign be identical or similar. The CJEU stressed that, in order to appreciate the existence of an ‘evocation’, one must refer to the perception of an average European consumer, who is reasonably well-informed and reasonably attentive and knowledgeable; such appreciation must be applied to the whole territory of the European Union, but may be examined in relation to the consumers of single member state.
The answer to the questions was thus that Article 103(2)(b) of Regulation 1308/2013 must be interpreted in the sense that the ‘evocation’ mentioned in this article does not imply, as a preliminary condition, that the product benefitting from the PDO and the product or service covered by the contested sign must be identical or similar. Such ‘evocation’ is established when the use of a sign triggers, in the mind of an average European consumer, who is reasonably informed and reasonably attentive and knowledgeable, a link that is sufficiently direct and unambiguous between the sign and the PDO. The existence of this link may be proven by different elements, including the partial incorporation of the PDO in the contested sign or the phonetic or visual proximity of the two denominations, or by a conceptual similarity between the sign and the PDO or a similarity between the products covered by the DPO and the products and services designated by the sign. The national court must take into consideration all the relevant elements surrounding the use of the PDO.
Finally, the CJEU was asked to decide whether the existence of an ‘evocation’ was conditional on the existence of acts of unfair competition. The CJEU answered that the regime of protection of PDOs is an objective regime that does not require to prove the existence of an intention or fault. However, the same set of facts may fall under both the regime of protection of PDOs and the unfair competition regime under the applicable national law.
This article first appeared on WTR Daily, part of World Trademark Review, in september 2021. For further information, please go to www.worldtrademarkreview.com.