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Port Charlotte - Case C-56/16

• Opinion of Advocate General on the registry of the trademark “Port Charlotte”, for whiskey (class 33 of the Nice Agreement), published on May 18, 2017;

• The protection of PDOs granted to wines under EU Law, once the PDO has been registered, is exhaustive and cannot be complemented by Member-States' national Law;

• The interpretation of the Law, namely of terms like use, misuse, imitation, evocation, exploitation of reputation is a genuine issue of law, subject to the scrutiny of the Court of Justice;

• The term “Port/Porto”, a Protected Designation of Origin (PDO), cannot be used in trademarks, when it is likely that the trademark shall derive unfair advantage from its reputation and also when the trademark may evoke the products protected by the PDO;

• To sustain that a PDO is common or generic cannot be accepted, as it deprived the PDO of substance, in contravention of Regulation no. 1234/2007.

Background of the case:

The Scottish company Bruichladdich Distillery Co. Ltd. (BD) filed a trademark application for “Port Charlotte”, for alcoholic beverages, in 2006.

In 2011, after Instituto dos Vinhos do Douro e Porto, IP (IVDP) filed an application with the EUIPO for a declaration that the mark was invalid, BD limited the list of goods to whiskey.

IVDP’s application was rejected by the EUIPO and, as a consequence, IVDP appealed to the General Court. However, the General Court confirmed the compatibility of the contested mark with the PDO “Port”, which decision was also appealed – by both the EUIPO and IVDP.

The EUIPO appeal was based on the controversy of whether or not the body of legal rules applicable to the protection of a PDO for wines is exclusively and comprehensively laid down in Regulation no. 1234/2007.

IVDP’s appeal included three sets of arguments:

i. That Regulation 1234/2007 does not contain the exhaustive regime applicable to wine PDOs and shall be completed by national Law;

ii. That trademark “Port Charlotte”, for whiskey, derives unfair advantage from Port PDO’s reputation;

iii. That trademark “Port Charlotte” evokes the products protected by the PDO.

Opinion rendered by the Advocate General:

In his opinion, the Advocate General addresses each argument individually, in order to conclude that the General Court’s judgement shall be set aside and the decision of the EUIPO shall be annulled.

As to the controversy of whether or not the body of legal rules applicable to the protection of a PDO for wines is exclusively and comprehensively laid down in Regulation no. 1234/2007, the Advocate General’s opinion is that EU Law is comprehensive in this regard. To sustain that conclusion, the Advocate General recalls that the procedure to grant a wine PDO takes into consideration national legislation; in fact, with regard to wines, it was because PDO Port already benefited from protection under Portuguese Law as “quality wines produced in specific regions”, that, once Portugal forwarded that information to the Commission, it was automatically protected under Regulation no. 1234/2007. In any case, national provisions cease to apply once PDO status is granted under Regulation no. 1234/2007.

Regarding the argument that “Port Charlotte” derives unfair advantage from Port PDO’s reputation, the Advocate General found that irrespective of the meaning of “Port” in different languages, that cannot justify leaving the PDO without protection. Furthermore, given the proximity of products (alcoholic beverages), targeted at the same type of public and using the same distribution networks, the PDO Port cannot be used, on its own or with other words, as trademarks for these products, as from such use the trademark owner is likely to derive unfair advantage from the reputation of the PDO.

Finally, concerning the evocation claim, the Advocate General reminded that the prohibition of evocation is not necessarily linked to the likelihood of confusion by the public (since the General Court had concluded that this was not a case of evocation, due to the fact that it had found no likelihood of confusion between the products at stake). In this case, the General Advocate found that “Port Charlotte” may evoke, in the mind of a reasonably well informed and observant European consumer, the wines protected by the Port PDO.

The final decision from the European Court of Justice is to be expected within the next months.

The Advocate General’s opinion is already available in all EU languages here: http://curia.europa.eu/juris/document/document.jsf?text=&docid=190794&pageIndex=0&doclang=ES&mode=req&dir=&occ=first&part=1


12-09-2017