In the trademark dispute over the EU trademark application PORTWO GIN, the interest group for wines from Douro and Porto won. The protected designation of origin PDO “Porto” could lose its reputation. PDO “Porto” could be exploited in its reputation by the trademark application PORTWO GIN, the CFI ruled.
Porto has not only become one of the most popular tourist destinations in Portugal, but has also been known for many years as a region of origin of port wine and wines, whose reputation and fame are watched over by the Instituto dos Vinhos do Douro e do Porto. Accordingly, this interest group filed an opposition against the EU trademark application PORTWO GIN, which was filed with the EUIPO in January 2017 by Joaquim José Esteves Lopes Granja (Portugal). The Instituto dos Vinhos do Douro e do Porto claimed the earlier designations of origin PDO “Porto” and “Port” (in the territory of Portugal), and therefore requested a prohibition of the trade mark PORTWO GIN.
The Opposition Division rejected this objection, but the EUIPO Board of Appeal upheld the objection and rejected the trade mark application in its entirety. The trade mark applied for and PDO “Porto” were very similar visually and phonetically, the Board of Appeal ruled, also recognising similarities visually through the identical beginning “Port” in both marks. And since the PDO “Porto” enjoyed a reputation as one of the best and most prestigious wines in the world, the trade mark application PORTWO GIN would take advantage of that reputation (Article 103(2)(a)(ii) of Regulation No 1308/2013).
Action before CFI: Component “Porto” in the trade mark PORTWO GIN?
The trade mark applicant brought an action against this decision before the European Court of Justice (CFI). The trade mark applied for did not use the PDO “Porto”. The trade mark applied for does not use the PDO “Porto”, as the initial element “PORTWO” of this trade mark is a fanciful term which does not even fully reflect this PDO, he argued. Moreover, the addition ‘GIN’ of this mark was the most important element, which in any case clearly identified that it was obviously not wine.
The Board of Appeal had therefore wrongly found, was the complaint before the CFI, that the mark applied for used the PDO “Porto” and thus exploited its reputation (and had thus committed an infringement of Article 8(4a) of Regulation No 207/2009 in conjunction with Article 103(2)(a) of Regulation No 1308/2013).
Exploitation of a protected designation of origin
Accordingly, the main issue before the European Court was the exploitation of a protected designation of origin.
The CFI first confirmed that Art. 8(4a) of Regulation No 207/2009 should be read to cover the designation and protection of geographical indications for wine products. The Board of Appeal was therefore correct to refer to PDOs and protected geographical indications (PGIs) registered under Regulation No 1308/2013.
And according to the case law (see Champagne judgment of the ECJ of December 2017), there is an exploitation of the reputation of a PDO within the meaning of Article 103(2)(a)(ii) of Regulation No 1308/2013 if the PDO is used in a way that does not comply with the provisions of Article 103(2)(a)(ii) of Regulation No 1308/2013. U. is used in such a way as to take undue advantage of the reputation of the PDO. The marketing of a product with an explicit or implicit reference to a geographical indication may therefore be liable to mislead the public and to take unjustified advantage of the reputation of the geographical indication in question.
The CFI explained that in the present case, ‘Porto’, consumers might assume that spirits of the PORTWO GIN brand meet the strict requirements and quality standards of the PDO ‘Porto’. The particular image and distinctiveness that the PDO ‘Porto’ enjoys for wines in the eyes of the relevant public is transferable to the goods covered by the mark applied for, the CFI ruled. There was a certain proximity between the spirits in class 33 and the port wines, as they are alcoholic beverages, are aimed at the same type of consumers, are consumed on the same occasions and have the same distribution and sales channels.
Exceptional reputation PDO “Porto” unlawfully exploited
And the trade mark applicant had also taken unlawful advantage of this, the CFI ruled, by using the PDO “Porto” and “Port” as the most distinctive and dominant elements of its trade mark. Contrary to what the trade mark applicant believed, the addition GIN hardly played a role in the distinctive character, as GIN is to be seen as descriptive of the goods claimed. And in a direct comparison of PORTWO and PORTO, there was such a close connection that PORTWO could clearly not be separated from the earlier PDO PORTO. The trade mark proprietor had thus intended to benefit from the exceptional reputation and recognition of the PDO ‘Porto’.
The Board of Appeal was therefore entirely correct in finding that the mark applied for exploited the reputation of the PDO “Porto” within the meaning of Article 103(2)(a)(ii) of Regulation No 1308/2013, the CFI ruled, dismissing the action.
Protected designation of origin – are you interested in this topic?
In this context, please also read our article Geographical word mark: Swabian Glen Whisky – is anyone thinking of Scotland? and also ECJ and Morbier, which dealt with the question: Does the protected designation of origin only protect the registered name or does the protection also prevent the imitation of the protected product?