The Advocate General of the European Court Giovanni Pitruzzella issued his opinion on the Case C‑783/19 Comité Interprofessionnel du Vin de Champagne v GB.
In brief, this case targets the question whether protection of a product as a geographical indication can cover related services too. The dispute has the following background:
The CIVC, the appellant in the main proceedings, is a semi-public organisation with legal personality, recognised under French law and responsible for safeguarding the interests of champagne producers. The CIVC brought an action before the Commercial Court, Barcelona, Spain seeking an order requiring GB, the respondent in the main proceedings, to cease use of the sign CHAMPANILLO, including on social media (Instagram and Facebook), to remove any insignia or advertising or commercial document featuring that sign from the market and from the internet, and to cancel the domain name ‘champanillo.es’. GB appeared before the court claiming that the sign CHAMPANILLO is used as a trade name for catering premises (tapas bars situated in the Autonomous Community of Catalonia), and that there was no likelihood of confusion with the products covered by the name ‘Champagne’ and no intention of taking unfair advantage of the reputation of that name.
The Commercial Court, Barcelona rejected all of the CIVC’s claims. It held that the use of the sign CHAMPANILLO did not constitute an evocation in breach of the ‘Champagne’ PDO, since it was intended to designate not an alcoholic beverage but catering premises – where champagne is not sold – and therefore products other than those protected by the PDO and targeting a different market. In the grounds of that judgment, the Commercial Court, Barcelona referred to the guidance provided by the Supreme Court, Spain in a 2016 judgment, in which it was ruled that the use of the term CHAMPÌN to market a non-alcoholic fizzy fruit drink consumed at children’s parties did not infringe the ‘Champagne’ PDO on account of the difference between the products concerned and their target market, despite the phonetic similarity between the two signs.
The CIVC appealed against the judgment of the Commercial Court, Barcelona before the Provincial Court, Barcelona, Spain. The Provincial Court explains that: (i) GB has twice attempted to register the sign CHAMPANILLO as a trade mark with the Spanish patent office and that those applications were rejected, by decisions of 8 February 2011 and of 14 April 2015, following opposition from the CIVC; (ii) GB uses the image of two champagne coupes containing a sparkling beverage as a graphic medium to advertise its premises; (iii) the CIVC produced documents certifying that, until 2015, GB solda sparkling wine called ‘Champanillo’ on its premises and that sales ceased only following action taken by the CIVC.
The referring court notes that both Article 13 of Regulation No 510/2006 and Article 103 of Regulation No 1308/2013 protect PDOs in relation to products, with the sole exception of Article 103(2)(b) which also mentions services. The referring court states that it has doubts as to the scope and correct interpretation of the provisions of EU law on the protection of a PDO in a situation where the sign allegedly in conflict with that name is used in the course of trade to designate not goods but services.
In those circumstances, the Provincial Court, Barcelona decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
‘(1) Does the scope of protection of [a] designation of origin make it possible to protect that designation of origin not only as against similar products but also as against any services which may be associated with the direct or indirect distribution of those products?
(2) Does the risk of infringement by evocation, to which the articles in question of the Community regulations refer, necessitate in the first instance a nominal analysis[,] to determine the effect that this has on the average consumer, or[,] in order to examine that risk of infringement by evocation[,] is it necessary to establish first of all that the products at issue are the same or similar or are complex products whose components include a product protected by a designation of origin?
(3) Must the risk of infringement by evocation be defined using objective criteria when the names are exactly the same or highly similar or must that risk be calibrated by reference to the products and services which evoke and are evoked in order to conclude that the risk of evocation is tenuous or irrelevant?
(4) In cases where there is a risk of evocation or exploitation, is the protection provided for in the legislation referred to specific protection related to the special features of the products concerned or must the protection be connected to the provisions on unfair competition?’
The Advocate’s opinion:
Article 103(2)(b) of Regulation 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 must be interpreted as meaning that acts of misuse, imitation or evocation of a PDO in relation to services may also come within the scope of that provision.
In order to determine whether there is an evocation of a protected designation of origin within the meaning of Article 103(2) of Regulation No 1308/2013, it is not necessary to establish, first of all, that the product covered by that designation and the product or service covered by the disputed sign are identical or comparable or that the latter product includes among its ingredients the product covered by the protected designation of origin. However, whether or not the products are identical or comparable is a factor that the national court is required to take into consideration, together with any other relevant factor, when assessing whether there is an evocation within the meaning of that provision.
The protection against evocation provided for in Article 103(2)(b) of Regulation No 1308/2013 is not limited to cases where the practice giving rise to evocation satisfies the conditions for an act of unfair competition within the meaning of the relevant provisions of the applicable national law.