The European Court has issued a decision on case C‑56/16 P UIPO срещу Instituto dos Vinhos do Douro e do Porto IP. The case concerns the following:
n 27 October 2006, [Bruichladdich Distillery Co. Ltd, (“Bruichladdich”)] filed an application for registration of an [EU] trade mark with [EUIPO] pursuant to … Regulation [No 207/2009].
Registration as a mark was sought for the word sign PORT CHARLOTTE (“the contested mark”).
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: “Alcoholic beverages”.
The contested mark was registered on 18 October 2007 under No 5421474, and published in Community Trade Marks Bulletin No 60/2007 of 29 October 2007.
On 7 April 2011, [IVDP] filed an application with [EUIPO] for a declaration that the contested mark was invalid pursuant to Article 53(1)(c), read in conjunction with Article 8(4), Article 53(2)(d), and Article 52(1)(a), read in conjunction with Article 7(1)(c) and (g) of Regulation No 207/2009, in so far as that mark designated the goods referred to in paragraph 3 above.
In response to the application for a declaration of invalidity, [Bruichladdich] limited the list of goods in respect of which the contested mark was registered to goods corresponding to the following description: “Whisky”.
In support of its application for a declaration of invalidity, [IVDP] relied on the appellations of origin “[P]orto” and “[P]ort”, which it claimed … were protected, in all the Member States, by several provisions of Portuguese law and by Article 118m(2) of … Regulation … No [1234/2007] … .
By decision of 30 April 2013, the Cancellation Division rejected the application for a declaration of invalidity.
On 22 May 2013, [IVDP] filed a notice of appeal with [EUIPO], pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.
By [the contested decision], the Fourth Board of Appeal of [EUIPO] dismissed the appeal.
In the first place, the Board of Appeal rejected the argument regarding infringement of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof, in essence on the ground that the protection of designations of origin for wines was governed exclusively by Regulation No [234/2007] and, therefore, fell within the exclusive competence of the European Union. …
Furthermore, the Board of Appeal found that those geographical indications were protected only for wines and, therefore, for goods that were neither identical nor comparable to a product denominated “whisky”, namely a spirit drink with a different appearance and degree of alcohol that cannot comply with the product specification for a wine within the meaning of Article 118m(2)(a)(i) of Regulation No [1234/2007]. In so far as [IVDP] relied on the reputation of those designations of origin within the meaning of Article 118m(2)(a)(ii) of that regulation, the Board of Appeal found that the contested mark neither “use[d]” nor “evoke[d]” the geographical indications “porto” or “port”, so that it was not necessary to ascertain whether they had a reputation. … The Portuguese consumer would know that “the geographic term is actually ’Oporto’ or ‘Porto’ and that ‘Port’ is just its shortened form used on wine labels to refer to the type of wine protected under the geographical indication” (paragraphs 19 to 26 of the contested decision).
The Board of Appeal rejected [IVDP’s] argument that the protection under Article 118m(2) of Regulation No [1234/2007] ought to be extended to any sign “that includes” the term “port”. There was also no “evocation” of a port wine within the meaning of Article 118m(2)(b) of that regulation, since whisky was a different product and nothing in the contested mark contained a potentially misleading or confusing statement. Therefore, according to the Board of Appeal, the appeal was without merit under the provisions of EU law protecting geographical origins for wines and there was no need to assess whether the contested mark had a reputation (paragraphs 27 to 29 of the contested decision).
In the second place, the Board of Appeal rejected the argument regarding infringement of Article 53(2)(d) of Regulation No 207/2009, based on the claimed appellations of origin ‘[P]orto’ and ‘[P]ort’, registered with the World Intellectual Property Organisation (WIPO) on 18 March 1983 under No 682, in accordance with the Lisbon Agreement. …
In the third place, the Board of Appeal rejected the arguments regarding infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) and (g) thereof. …’
The Court’s decision:
In the present case, the General Court, following an assessment of facts that is not open to challenge, found, in paragraphs 71 and 76 of the judgment under appeal, that the sign ‘PORT CHARLOTTE’, since it consists of the term ‘port’ and the first name Charlotte, will be perceived by the relevant public as a logical and conceptual unit referring to a harbour, that is to say a place situated on the coast or on a river, with which a first name, which constitutes the most important and most distinctive element in the contested mark, is associated. According to the General Court, the relevant public will not perceive, in that sign, any geographical reference to the port wine covered by the designation of origin in question.
By its third ground of appeal in the cross-appeal, IVDP submits that the General Court infringed Article 118m(2)(b) of Regulation No 1234/2007 by holding, in paragraph 75 of the judgment under appeal, that the use of the contested mark PORT CHARLOTTE, which is registered in respect of a whisky, did not involve ‘misuse, imitation or evocation’, within the meaning of that provision, of the protected designation of origin ‘Porto’ or ‘Port’.
The General Court, without erring in law, applied the fundamental criterion deriving from that case-law, by holding, in paragraph 76 of the judgment under appeal, that, having regard to the findings set out in paragraph 71 of that same judgment, even though the term ‘port’ forms an integral part of the contested mark, the average consumer, even if he is of Portuguese origin or speaks Portuguese, in reaction to a whisky bearing that mark, will not associate it with a port wine covered by the designation of origin in question.
The General Court added, in paragraph 76 of the judgment under appeal, that that assessment is confirmed by the not insignificant differences between the respective features of a port wine and a whisky in terms of, inter alia, ingredients, alcohol content and taste, of which the average consumer is well aware and to which the Board of Appeal had rightly drawn attention in paragraphs 20 and 34 of the contested decision.
So in that regard:
1. Sets aside the judgment of the General Court of the European Union of 18 November 2015, Instituto dos Vinhos do Douro e do Porto v OHIM — Bruichladdich Distillery (PORT CHARLOTTE) (T‑659/14, EU:T:2015:863);
2. Dismisses the action brought by Instituto dos Vinhos do Douro e do Porto IP in Case T‑659/14 against the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 8 July 2014 (Case R 946/2013-4);
3. Orders Instituto dos Vinhos do Douro e do Porto IP to pay the costs incurred by the European Union Intellectual Property Office (EUIPO) and by Bruichladdich Distillery Co. Ltd in both sets of judicial proceedings;
4. Orders the Portuguese Republic and the European Commission to bear their own respective costs.