Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

6 October 2021 (*)

(EU trade mark – Opposition proceedings – Application for EU word mark PORTWO GIN – Earlier designation of origin ‘Porto’– Concepts of ‘use’ and ‘exploitation’ of a protected designation of origin – Article 103(2)(a)(ii) of Regulation (EU) No 1308/2013)

In Case T‑417/20,

Joaquim José Esteves Lopes Granja, residing in Vila Nova de Gaia (Portugal), represented by O. Santos Costa, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Instituto dos Vinhos do Douro e do Porto, IP (IVDP), established in Peso da Régua (Portugal), represented by P. Sousa e Silva, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 21 April 2020 (Case R 993/2019-2) relating to opposition proceedings between Instituto dos Vinhos do Douro e do Porto, IP and Joaquim Jósé Esteves Lopes Granja,

THE GENERAL COURT (Fifth Chamber),

composed of D. Spielmann, President, O. Spineanu-Matei and R. Mastroianni (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 3 July 2020,

having regard to the response of EUIPO lodged at the Court Registry on 1 December 2020,

having regard to the response of the intervener lodged at the Court Registry on 12 November 2020,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 31 January 2017, the applicant, Joaquim Jósé Esteves Lopes Granja, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2        Registration as a mark was sought for the word sign PORTWO GIN.

3        The goods in respect of which registration was sought are in Class 33 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Spirits [beverages]’.

4        The trade mark application was published in European Union Trade Marks Bulletin No 024/2017 of 6 February 2017.

5        On 19 April 2017, the intervener, Instituto dos Vinhos do Douro e do Porto, filed a notice of opposition to registration of the published trade mark application for the goods referred to in paragraph 3.

6        The ground relied on in support of the opposition was that set out in Article 8(4)(a) of Regulation No 207/2009 (now Article 8(6) of Regulation 2017/1001).

7        The opposition was based on the protected designations of origin (PDO) ‘Porto’ and ‘Port’ in the territory of Portugal. The intervener claimed that use of the mark applied for could be prohibited in accordance with (i) Portuguese law concerning the protection of designations of origin; (ii) Article 103(2) of Regulation (EU) No 1308/2013 of the European Parliament and of the Council of 17 December 2013 establishing a common organisation of the markets in agricultural products and repealing Council Regulations (EEC) No 922/72, (EEC) No 234/79, (EC) No 1037/2001 and (EC) No 1234/2007 (OJ 2013 L 347, p. 671); and (iii) Articles 22 and 23 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), in Annex 1C of the Agreement Establishing the World Trade Organization (WTO), signed in Marrakesh on 15 April 1994 and approved by Council Decision of 22 December 1994 concerning the conclusion on behalf of the European Community, as regards matters within its competence, of the agreements reached in the Uruguay Round multilateral negotiations (1986-1994) (OJ 1994 L 336, p. 1).

8        By decision of 16 April 2019, the Opposition Division rejected the opposition in its entirety, considering that the conditions of Article 103(2) of Regulation No 1308/2013 had not been satisfied and that, accordingly, the opposition was not well founded under Article 8(6) of Regulation 2017/1001.

9        On 8 May 2019, the intervener filed an appeal against the decision of the Opposition Division, requesting that the decision be set aside in its entirety.

10      By decision of 21 April 2020 (‘the contested decision’), the Second Board of Appeal granted the appeal, annulled the decision of the Opposition Division and rejected the application for the mark in its entirety.

11      After excluding the application of Article 103(2)(a)(i) and (b) of Regulation No 1308/2013, the Board of Appeal examined whether the mark applied for exploited the PDO ‘Porto’ within the meaning of Article 103(2)(a)(ii) of that regulation.

12      First of all, the Board of Appeal indicated that the PDO ‘Porto’, as one of the finest and most prestigious wines in the world, enjoyed a reputation within the meaning of Article 103(2)(a)(ii) of Regulation No 1308/2013.

13      Secondly, the Board of Appeal found that the notion of ‘use’ referred to in Article 103(2)(a)(ii) of Regulation No 1308/2013 required that the mark applied for make use of the PDO itself, in the form in which that designation was registered or, at least, in a form with such close links to it, in visual and/or phonetic terms, that that mark clearly cannot be dissociated from the PDO.

14      Thirdly, the Board of Appeal indicated that the mark applied for and the PDO ‘Porto’ were, visually and aurally, very similar. As regards the visual aspect, it noted that the first four letters of that mark were identical to the first four letters of that PDO, that the first part was generally the part that primarily caught the consumer’s attention, that the additional word ‘GIN’ of that mark was totally descriptive in relation to the goods at issue and that a significant part of the relevant public might perceive the presence of the letter ‘w’ as a spelling mistake. As to the phonetic aspect, it considered that, at least in French, the sound of the initial element of the contested mark was identical to the sound of that PDO. It indicated that that additional word was totally descriptive of those goods and would probably not be pronounced by the relevant consumer. Furthermore, it considered that the relevant consumers would not split that initial element into two elements, ‘PORT’ and ‘WO’ or ‘Por’ and ‘Two’.

15      Fourthly, the Board of Appeal considered it probable that the relevant consumer would associate the mark applied for with the PDO ‘Porto’. According to the Board of Appeal, that mark and that PDO were highly similar, the goods at issue were similar and intended for the same consumers and that that PDO enjoyed an exceptional reputation.

16      Fifthly, the Board of Appeal indicated that the use of the mark applied for was likely to affect consumers’ preferences by inducing them to believe that the applicant’s spirits complied with the strict requirements and quality standards of the PDO ‘Porto’, which enjoyed enormous repute and appreciation among European consumers, for its characteristic qualities. Therefore, according to the Board of Appeal, the use of that mark, containing the element ‘PORTWO’ in relation to spirits was likely to take undue advantage of and therefore to exploit the exceptional reputation wines with that PDO enjoyed among European consumers.

17      Lastly, the Board of Appeal concluded that the mark applied for made direct use of the PDO ‘Porto’ and that its use for the goods at issue was likely to exploit the reputation of that PDO, within the meaning of Article 103(2)(a)(ii) of Regulation No 1308/2013.

 Forms of order sought

18      The applicant claims that the Court should

–        allow the action in its entirety;

–        annul the contested decision and grant the registration of the mark applied for;

–        order EUIPO and the intervener to pay the costs.

19      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

20      The intervener contends that the Court should:

–        in essence, dismiss the action;

–        order the applicant to pay the costs, including those relating to the proceedings before EUIPO and before the Board of Appeal.

 Law

21      Given the filing date of the application for registration at issue, namely 31 January 2017, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 in particular (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their written pleadings to Article 8(6) of Regulation 2017/1001 must be understood as referring to Article 8(4a) of Regulation No 207/2009, as amended.

22      The applicant is relying, in essence, on a single ground of appeal, alleging infringement of Article 8(4a) of Regulation No 207/2009, read in conjunction with Article 103(2)(a) of Regulation No 1308/2013, in that the Board of Appeal erred in finding that the mark applied for used the PDO ‘Porto’ and, therefore, exploited its reputation.

 Preliminary observations

23      Article 8(4a) of Regulation No 207/2009 states that, upon opposition by any person authorised under the relevant law to exercise the rights arising from a designation of origin or a geographical indication, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or national law providing for the protection of designations of origin or geographical indications: (i) an application for a designation of origin or a geographical indication had already been submitted, in accordance with Union legislation or national law, prior to the date of application for registration of the EU trade mark or the date of the priority claimed for the application, subject to its subsequent registration; and (ii) that designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark.

24      Article 8(4a) of Regulation No 207/2009 must be read with regard to the relevant provisions of EU law concerning the determination and protection of geographical indications as regards wine products. Therefore, as correctly held by the Board of Appeal in paragraph 16 of the contested decision, reference should be made to PDO and to protected geographical indications (PGI) registered in accordance with Regulation No 1308/2013.

25      In the present case, it is not in dispute that, as the Board of Appeal noted in paragraphs 17 and 18 of the contested decision, the terms ‘Porto‘ and ‘Port’ constitute designations of origin protected in the EU by Regulation No 1308/2013 for wine and that the intervener is authorised to exercise the rights arising from those PDO under Portuguese law.

26      Article 102(1) of Regulation No 1308/2013 governs the relationship between PDO and trade marks as follows:

‘The registration of a trade mark that contains or consists of a [PDO] or a [PGI] which does not comply with the product specification concerned or the use of which falls under Article 103(2), and that relates to a product falling under one of the categories listed in Part II of Annex VII shall be:

(a)      refused if the application for registration of the trade mark is submitted after the date of submission of the application for protection of the designation of origin or geographical indication to the Commission and the designation of origin or geographical indication is subsequently protected; or

(b)      invalidated.’

27      Article 103(2) of Regulation No 1308/2013 provides as follows:

‘A [PDO] and a [PGI], as well as the wine using that protected name in conformity with the product specifications, shall be protected against:

(a)      any direct or indirect commercial use of that protected name:

(i)      by comparable products not complying with the product specification of the protected name; or

(ii)      in so far as such use exploits the reputation of a designation of origin or a geographical indication;

(b)      any misuse, imitation or evocation, even if the true origin of the product or service is indicated or if the protected name is translated, transcripted or transliterated or accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation”, “flavour”, “like” or similar;

[…]’

28      As regards the application of Regulation No 1308/2013, it should be recalled, and as was indicated in paragraph 11 above, that the Board of Appeal applied only Article 103(2)(a)(ii) of Regulation No 1308/2013, expressly excluding the application of Article 103(2)(a)(i) and of Article 103(2)(b) of that regulation.

29      Therefore, the applicant’s arguments alleging a lack of comparable character in the goods at issue in terms of Article 103(2)(a)(i) of Regulation No 1308/2013 and the concepts of misuse, imitation and evocation within the meaning of Article 103(2)(b) of that regulation are ineffective in the present case.

 Infringement of Article 8(4) of Regulation No 207/2009, read in conjunction with Article 103(2)(a)(ii) of Regulation No 1308/2013

30      The applicant does not dispute the reputation of the PDO ‘Porto’. He submits, however, that the Board of Appeal erred in finding, first, that the signs at issue were similar; secondly, that there was a likelihood of association between the mark applied for and that PDO; and, thirdly, that the use of that mark for the goods at issue was likely to exploit the reputation of that PDO.

31      The scope of the protection afforded by Article 103(2)(a) of Regulation No 1308/2013 is particularly broad, in that those provisions are directed at any direct or indirect commercial use of a PDO or a PGI and protect them against such use, both as regards comparable products which do not comply with the product specifications of the protected name and as regards products which are not comparable, in so far as that use exploits the reputation of that PDO or that PGI. The extent of that protection is consistent with the objective, confirmed in recital 97 of that regulation, of protecting PDO and PGI against any use intended to take advantage of the reputation enjoyed by products which comply with the relevant specifications (judgment of 20 December 2017, Comité Interprofessionnel du Vin de Champagne, C‑393/16, EU:C:2017:991, paragraph 31).

32      Moreover, since the provisions on protection of designations of origin and geographical indications contained in the different sectoral regulations are drafted in largely identical terms, the Court of Justice applies the principles that have emerged in the context of interpretation of each protection regime across the board (see, to that effect, judgment of 20 December 2017, Comité Interprofessionnel du Vin de Champagne, C‑393/16, EU:C:2017:991, paragraph 32).

33      As regards the interpretation of Article 16(a) of Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008, concerning the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89 (OJ 2008 L 39, p. 16), the terms and objective of which are analogous to those of Article 103(2)(a) of Regulation No 1308/2013, the Court of Justice found that the word ‘use’ in that provision required, by definition, that the contested sign make use of the geographical indication itself, in the form in which that geographical indication had been registered or, at least, in a form with such close links to it, in visual and/or phonetic terms, that the contested sign clearly cannot be dissociated from it (see, to that effect, judgment of 7 June 2018, Scotch Whisky Association, C‑44/17, EU:C:2018:415, paragraph 29).

34      According to settled case-law of the Court of Justice, the use of a mark containing a geographical indication, or a term corresponding to that indication and its translation, with respect to spirits which do not meet the relevant specifications, constitutes, in principle, for the purposes of Article 16(a) of Regulation No 110/2008, a direct commercial use of that geographical indication (judgments of 14 July 2011, Bureau national interprofessionnel du Cognac, C‑4/10 and C‑27/10, EU:C:2011:484, paragraph 55, and of 20 December 2017, Comité Interprofessionnel du Vin de Champagne, C‑393/16, EU:C:2017:991, paragraph 34).

35      Accordingly, for a situation to be covered by Article 2(a) of Regulation No 1308/2013, the sign at issue must adhere to the requirement to use a PDO or a PGI that is identical, or at least strongly similar, in phonetic and/or visual terms (see, by analogy, judgment of 7 June 2018, Scotch Whisky Association, C‑44/17, EU:C:2018:415, paragraph 31).

36      With respect to the context of Article 2(a) of Regulation No 1308/2013, the Court notes that the scope of application of that provision must, necessarily, be distinguished from that of other rules for the protection of PDO or PGI, set out in Article 2(b) to (d). Article 2(a) must, in particular, be distinguished from the situation covered by Article 2(b), which refers to ‘any misuse, imitation or evocation’, that is to say situations in which the contested sign does not use the PDO or the PGI as such but suggests it in such a way as causes the consumer to establish a sufficiently close connection between that sign and the PDO or the PGI (see, by analogy, judgment of 7 June 2018, Scotch Whisky Association, C‑44/17, EU:C:2018:415, paragraph 33).

37      It should be emphasised that the provisions of Regulation No 1308/2013, and in particular of Article 103 thereof, seek to prevent misuse of PDO or PGI, in the interest not only of consumers but also of producers who have made concerted efforts to guarantee the qualities expected of goods displaying such PDO or PGI legitimately (see, to that effect, judgments of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto, C‑56/16 P, EU:C:2017:693, paragraph 82, and of 20 December 2017, Comité Interprofessionnel du Vin de Champagne, C‑393/16, EU:C:2017:991, paragraph 38). In that context, Article 103(2)(a) more expressly prohibits operators from using a PDO or a PGI for commercial purposes for goods not covered by the registration, in particular with the aim of taking undue advantage of that PDO or PGI (see, by analogy, judgment of 7 June 2018, Scotch Whisky Association, C‑44/17, EU:C:2018:415, paragraph 38).

38      In the present case, it is appropriate to ascertain, first of all, whether the Board of Appeal was correct in finding a use, within the meaning of Article 103(2)(a)(ii) of Regulation No 1308/2013, of the PDO ‘Porto’ by the mark applied for. Secondly, it should be ascertained whether or not the Board of Appeal erred in finding that the relevant public, comprising average consumers of wines in the EU, would associate that mark with that PDO. Lastly, it should be ascertained whether that Board of Appeal was right to conclude that that mark was likely to take undue advantage of and, therefore, to exploit the reputation enjoyed by that PDO among those consumers.

 Use of the PDO ‘Porto’

39      The applicant claims that there is no similarity between the signs at issue. According to the applicant, the mark applied for does not use the PDO ‘Porto’ in that the initial element ‘PORTWO’ of that mark is a fanciful term which does not even reproduce the whole of that PDO. Furthermore, he considers that the additional word ‘GIN’ of that mark is the most significant and distinctive element, which immediately draws the attention of the relevant public and which clearly identifies a product that is manifestly different from wine. In addition, that initial element and that additional word would be understood by that public as being one single, logical and conceptual unit.

40      In the present case, as regards the visual aspect, it should be pointed out that the Board of Appeal was correct to note, in paragraphs 43 and 44 of the contested decision, that the first four letters of the mark applied for were identical to the first four letters of the PDO ‘Porto’. Furthermore, it correctly indicated that the initial part of a sign was generally what caught the attention of the consumer. Moreover, it would not rule out that a significant part of the relevant public might perceive the presence of the letter ‘w’ as a spelling mistake.

41      As to the phonetic aspect, the Board of Appeal was right to consider that, at least in French, the sound of the initial element of the mark applied for was identical to the sound of the PDO ‘Porto’.

42      As regards the additional word ‘GIN’, contrary to the applicant’s submission, the Board of Appeal was right to consider that it was descriptive of the goods covered by the mark applied for. As EUIPO also submits, since that mark covers spirits in Class 33, that additional word is devoid of distinctive character and plays a very limited role in the analysis of that mark. By contrast, the most distinctive element is the initial element ‘PORTWO’ of the same mark.

43      It should, moreover, be emphasised that the addition of a word to a contested element cannot alter the conclusion concerning the use of an earlier PDO in the mark applied for (see, to that effect, judgment of 20 December 2017, Comité Interprofessionnel du Vin de Champagne, C‑393/16, EU:C:2017:991, paragraph 35).

44      It follows that the conditions for allowing a finding of ‘use’ of the PDO ‘Porto’ in the mark applied for are satisfied in that, in accordance with the case-law, there is such a close connection between the signs, from a phonetic and visual perspective, that the sign whose registration is contested is clearly indissociable from the earlier PDO.

 Association between the mark applied for and the PDO ‘Porto’

45      The applicant claims that there can be no association between the mark applied for and the PDO ‘Porto’. According to the applicant, the additional word ‘GIN’ in that mark refers to a product that is different from wine. Although the letters ‘p’, ‘o’, ‘r’ and ‘t’ are an integral part of the mark at issue, the average consumer would not, on seeing a gin bearing that mark, associate it with a Port wine benefiting from the PDO at issue. That assessment is confirmed by the not inconsiderable differences between the respective characteristics of Port wine and gin, particularly in terms of ingredients, alcohol content and flavour, which are well known to the average consumer.

46      In that regard, it should be noted that, according to the case-law, the incorporation in a trade mark of a designation that is protected under Regulation No 1308/2013, such as the designation of origin ‘Porto’, cannot be held to be capable of exploiting the reputation of that designation of origin, for the purposes of Article 103(2)(a)(ii) of that regulation, if that incorporation does not lead the relevant public to associate that mark or the goods in respect of which it is registered with the designation of origin concerned or the wine product in respect of which it is protected (see, to that effect, judgment of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto, C‑56/16 P, EU:C:2017:693, paragraph 115).

47      In the present case, it is noteworthy that there is a certain degree of proximity between the spirits in Class 33 and Port wines, given that they are alcoholic beverages, that they are targeted at the same type of consumer, that they are consumed on the same occasions and that they share the same channels of distribution and of sale.

48      Consequently, in the light of the strong similarities between the mark applied for and the PDO ‘Porto’, the degree of proximity of the goods at issue and the exceptional reputation of that PDO, which, moreover, is not disputed by the applicant, the Board of Appeal did not err in finding it probable that the relevant consumer would associate that mark and that PDO.

 Exploitation of the reputation of the PDO ‘Porto’

49      The applicant claims that, in the light of his arguments relating to the use of the PDO ‘Porto’ and the lack of similarity between the signs at issue or of any association between the mark applied for and that PDO, it clearly cannot be concluded that that mark exploits that PDO. A PDO has a single legal function of ensuring that consumers are made aware of the fact that the origin of a particular product is as indicated on that product. The applicant submits that the intention cannot be to monopolise the name of a city, as is the situation in the present case, given that the designation of origin in the present case – ‘Porto’ – uses and matches the name of the second largest city in Portugal.

50      According to the case-law, exploitation of the reputation of a PDO, within the meaning of Article 103(2)(a)(ii) of Regulation No 1308/2013, entails use of the PDO that seeks to take undue advantage of the reputation enjoyed by the PDO (judgment of 20 December 2017, Comité Interprofessionnel du Vin de Champagne, C‑393/16, EU:C:2017:991, paragraph 40).

51      In the present case, the Board of Appeal was right to find, in paragraph 53 of the contested decision, that use of the mark applied for in relation to the spirits in Class 33 was likely to affect consumers’ preferences, by inducing them to believe that those spirits complied with the strict requirements and quality standards of the PDO ‘Porto’, which, as the applicant does not dispute, enjoys an exceptional reputation and appreciation among the relevant public, for its qualities and its characteristics.

52      It is noteworthy that the particular image and distinctive qualities that the PDO ‘Porto’ enjoys for wines in the eyes of the relevant public are transferable to the goods covered by the mark applied for. It must be stated, as EUIPO found, that the proprietor of an EU trade mark for gin who uses within that mark a PDO that enjoys exceptional reputation and recognition among the relevant public for wine takes undue advantage thereof, if it uses that PDO as the most distinctive and dominant element of its mark.

53      It follows that the Board of Appeal was fully entitled to find 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.

54      In the light of the foregoing, the single ground of appeal must be declared unfounded in its entirety and the present action, which relies on that single ground, must itself be rejected, without it being necessary to rule on the plea of inadmissibility raised by EUIPO regarding the second part of the applicant’s second head of claim and asking the General Court to grant the registration of the mark applied for.

 Costs

55      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, he must be ordered to pay the costs of the present proceedings, in accordance with the forms of order sought by EUIPO and the intervener. Furthermore, as regards the costs incurred by the intervener in the opposition proceedings and before the Board of Appeal, it is sufficient to note, given that the present judgment dismisses the action brought against the contested decision, that it is the operative part of that contested decision that continues to determine those costs (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 194).

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Dismisses the action.

2.      Orders Joaquim José Esteves Lopes Granja to pay the costs.

Delivered in open court in Luxembourg on 6 October 2021.

*      Language of the case: English.

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