(This article was written for the INTA Bulletin. The original article was published on July 15, 2015 and can be viewed here.)
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On 17 April 2015, the Office for Harmonization in the Internal Market (OHIM) issued its decision on opposition proceedings between The Institute of Douro and Port Wines (the Institute) and the applicant alcoholic beverage manufacturer Gerard Feltham. The Institute opposed the applicant’s figurative Community Trade Mark PORTOBELLO ROAD No.171 LONDON DRY GIN LONDON ENGLAND for gin because of the earlier Protected Designation of Origin (PDO) PORTO which is registered in respect of wine and used in the course of trade.
The Opposition Division referred to the fact that the Court of Justice has recently confirmed in BNI Cognac (judgments C-4/10 and C-27/10) that the EU regulations governing the battle between trade marks and PGI (Protected Geographical Indications) and PDO products are directly applicable and have immediate effect. The Opposition Division goes on to say that in line with new Office practices, the EU system of protection of PGIs for wines and spirits is exhaustive in nature and overrides national protection given to those products.
The Opposition Division held that although the applicant’s goods were gin and the opponent’s PDO was for wine, both are alcoholic beverages and so have the same objective characteristics. Furthermore, in relation to the relevant public, OHIM held that as the goods are consumed on identical occasions (i.e. for enjoyment and relaxation) and are sold through the same distribution channels, they are comparable.
Based on the evidence filed by the opponent, the Opposition Division was satisfied that the opponent’s signs have been used in the course of trade in respect of wine and also that the trade under these signs was of more than mere local significance, as required by Article 8(4) CTMR.
The Opposition Division held that because the applicant’s mark contained the word PORTO some consumers may assume the applicant’s sign is a sub-denomination of the appellation of origin and therefore the mark is misleading to consumers when it is used in respect of wine and spirits. It therefore rejected the applicant’s trade mark application. It will be interesting to see whether this ruling will lead to an increase in oppositions being taken by organisations seeking to protect their PDOs and PGIs.