Introduction
Facts
First-instance court
Provincial Court of Barcelona
CJEU
In a judgment handed down on 9 September 2021, the Court of Justice of the European Union (CJEU) ruled on a question referred for a preliminary ruling by the Provincial Court of Barcelona (15th Section) regarding the interpretation of article 103(2)(b) of EU Regulation 1308/2013. In particular, the question aimed to clarify:
- whether the provision protects protected designations of origin (PDOs) against the use in trade of signs that designate services instead of goods; and
- how to interpret the term "evocation" in such regulation.
The Comité Interprofessionnel du vin de Champagne (CIVC), the body that protects the interests of Champagne producers, filed a lawsuit before the Commercial Court of Barcelona against GB, the owner of various tapas bars in Spain. The CIVC claimed that GB had infringed the Champagne PDO by identifying its establishments with the sign "Champanillo" and using this denomination to promote them on social networks and in advertising brochures. Together with the Champanillo sign, GB displayed two clinking glasses filled with a carbonated beverage.
In 2011 and 2015, prior to these proceedings, the Spanish Patent and Trademark Office had upheld an opposition filed by the CIVC against the applications for registration of the CHAMPANILLO trademark (in class 43) filed by GB. The Spanish Patent and Trademark Office considered that the registration of this sign as a trademark would be incompatible with the Champagne PDO, which is subject to international protection.
The first-instance court dismissed the CIVC's claim, considering that the use of the Champanillo sign by GB did not constitute an evocation of the Champagne PDO since it was not used to designate an alcoholic beverage but was used instead to identify premises dedicated to catering activities. Therefore, it concluded that the use of the Champanillo sign did not constitute an infringement of the Champagne PDO.
The court based its decision on a previous Supreme Court ruling of 1 March 2016, which found that the use of the term "Champin" to market a non-alcoholic carbonated beverage did not infringe the Champagne PDO.
Not satisfied with the Court's assessment, the CIVC filed an appeal before the Provincial Court of Barcelona.
The 15th Section of the Provincial Court of Barcelona referred a question to the CJEU for a preliminary ruling on the interpretation of article 103(2)(b) of EU Regulation 1308/2013. In particular, the question aimed to clarify:
- whether such provisions protect PDOs against the use in trade of signs that designate services instead of goods; and
- the interpretation and scope of evocation.
Protection of PDOs against use in trade of signs that designate services
In response to the first question, the CJEU pointed out that EU Regulation 1308/2013 establishes that PDOs are protected against any usurpation, imitation or evocation, even if the true origin of the product or service is indicated. Although – by virtue of articles 92 and 93 of EU Regulation 1308/2013 – only goods may benefit from a PDO, the scope of protection conferred by that designation covers any use of the designation in marketing goods or services.
The CJEU therefore concluded that article 103(2)(b) of EU Regulation 1308/2013 had to be interpreted as protecting PDOs against conduct relating to both goods and services.
Evocation
In the second and third questions, the Provincial Court of Barcelona asked the CJEU how the term "evocation" in article 103(2)(b) of EU Regulation 1308/2013 should be interpreted. In this regard, the CJEU made the following clarifications:
- EU Regulation 1308/2013 does not require, as a prerequisite, that the product covered by a PDO and the product or service covered by the sign in question be identical or similar.
- Evocation is established when the use of a name creates a sufficiently direct and unequivocal link between that name and the PDO for an average European consumer who is reasonably well-informed, observant and circumspect.
- The existence of such a link may result from several elements – in particular:
- from the partial incorporation of the protected name;
- from the phonetic and visual similarity between the two names; and
- even in the absence of such elements, from the conceptual proximity between the PDO and the name in question or even from a similarity between the products covered by a PDO and the products or services covered by that same name.
Finally, in its fourth question, the Provincial Court of Barcelona asked the CJEU to determine whether the interpretation of the term "evocation" is subject to the finding of an unfair competition activity.
The CJEU answered in the negative, stating that the interpretation of the term "evocation" cannot be subject to the finding of the existence of an act of unfair competition, since EU Regulation 1308/2013 establishes a specific and particular protection that applies independently of the provisions of national law relating to unfair competition.
For further information on this topic please contact Julia Carretero at Grau & Angulo by telephone (+34 93 202 34 56) or email ([email protected]). The Grau & Angulo website can be accessed at www.ga-ip.com.