CELEX: 62014TJ0659
Community trade mark
Invalidity proceedings
Community word mark PORT CHARLOTTE
Earlier designations of origin ‘porto’ and ‘port’
Grounds for invalidity
Article 52(1)(a), Article 53(1)(c) and (2)(d) of Regulation (EC) No 207/2009
Article 7(1)(c) and (g) and (2) of Regulation No 207/2009
Article 8(4) of Regulation No 207/2009
Article 118m(2) of Regulation (EC) No 491/2009

Background to the dispute
On 27 October 2006, the intervener, Bruichladdich Distillery Co. Ltd, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (
OJ 1994 L 11, p. 1
), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (
OJ 2009 L 78, p. 1
)).
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, the applicant, Instituto dos Vinhos do Douro e do Porto, IP, filed an application with OHIM 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, the intervener 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, the applicant relied on the appellations of origin ‘porto’ and ‘port’, which it claimed (a) were protected, in all the Member States, by several provisions of Portuguese law and by Article 118m(2) of Council Regulation (EC) No 491/2009 of 25 May 2009 amending Regulation (EC) No 1234/2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation) (
OJ 2009 L 154, p. 1
), and (b) were registered and protected under the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of 31 October 1958, as revised and amended (‘the Lisbon Agreement’), in France, Italy, Cyprus, Hungary, Portugal and Slovakia.
By decision of 30 April 2013, the Cancellation Division rejected the application for a declaration of invalidity.
On 22 May 2013, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.
By decision of 8 July 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM 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 491/2009 and, therefore, fell within the exclusive competence of the European Union. Even if it was true that the protection under that regulation was determined by national legislation, the protection for geographical indications was limited to those listed in the ‘list of quality wines produced in specified regions’ (‘list of quality wines psr’), published in accordance with Article 54(4) of Council Regulation (EC) No 1493/1999 of 17 May 1999 on the common organisation of the market in wine (
OJ 1999 L 179, p. 1
). Moreover, Article 118m(2) of Regulation No 491/2009 protected the terms ‘porto’ and ‘port’ as geographical indications only on the basis of their being equivalent to the term ‘oporto’ (paragraphs 14 to 18 of the contested decision).
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 491/2009. In so far as the applicant 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. There was just one city known as Porto — Oporto in Portuguese — although there were a large number of cities with names containing the elements ‘porto’ or ‘port’, such as Porto Allegre or Port Louis. Also, it was not possible to establish a link between the sign PORT CHARLOTTE, the two elements of which designated a harbour named after a person called Charlotte, a geographical place or a city situated at the seaside, and the geographical indications ‘porto’ or ‘port’. 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 the applicant’s argument that the protection under Article 118m(2) of Regulation No 491/2009 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 ‘porto’ and ‘port’, registered with the World Intellectual Property Organisation (WIPO) on 18 March 1983 under No 682, in accordance with the Lisbon Agreement. That registration protected only the term ‘porto’, which is not part of the contested mark, and does not do so in Portugal (paragraphs 31 to 33 of the contested decision).
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. First, the contested mark could not refer at the same time to a place — existing or imaginary — called Port Charlotte and to ‘the city of Oporto (Porto)’. The Board of Appeal observed that the applicant had relied on the absolute ground for refusal under Article 7(1)(c) of that regulation ‘only on appeal’ and had not substantiated the claim that a place or city called Port Charlotte was known to the relevant average consumer. Therefore, the applicant had not relied on an infringement of that provision during ‘the cancellation proceedings’ and was not entitled to raise that ground in its appeal (paragraphs 35 to 38 of the contested decision). Secondly, the contested mark was not liable to mislead the public as to the geographical origin of the goods covered by it within the meaning of Article 7(1)(g) of that regulation. The Board of Appeal observed that the term ‘port’ did not designate a geographical region and the contested mark would not be associated with the region in which the applicant’s goods are produced. A deception would be less possible still since the consumer will easily recognise that whisky is a product with different characteristics from those of the applicant’s products (paragraph 34 of the contested decision).
Forms of order sought
The applicant claims that the Court should:
—
annul the contested decision;
—
alter the contested decision by declaring the contested mark invalid;
—
order OHIM to pay the costs, including those incurred before OHIM and the Board of Appeal.
OHIM and the intervener contend that the Court should:
—
dismiss the action;
—
order the applicant to pay the costs.
Law
Summary of the pleas for annulment
In support of the action, the applicant relies on one plea as to fact and five pleas in law.
By its first plea, the applicant disputes the statement made in the contested decision that the Portuguese name of the city of Porto is Oporto and not Porto.
By its second plea, the applicant complains that the Board of Appeal failed to take account of the fact that the terms ‘porto’ and ‘port’ were protected by Portuguese law as appellations of origin and constituted geographical indications within the meaning, inter alia, of Article 118m(2) of Regulation No 491/2009.
By its third plea, the applicant complains that the Board of Appeal was wrong in finding that the protection of designations of origin for wines was governed exclusively by Regulation No 491/2009, and not also by national law.
By its fourth plea, the applicant claims that the contested decision infringes Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof, since the appellations of origin ‘porto’ and ‘port’ confer on their proprietor, under both Portuguese law and EU law, the right to prohibit the use of a subsequent trade mark.
In its fifth plea, the applicant relies on an infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(g) thereof.
By its sixth plea, the applicant claims that there has been an infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) thereof.
The Court considers that it is necessary to assess together the first, second and third pleas, which overlap each other.
The first, second and third pleas, based on error as to fact concerning the name Oporto, the fact that the terms
‘porto
’ and
‘port
’ are protected as geographical indications per se and not as
‘equivalent terms
’, and on the fact that the protection of designations of origin for wines is governed not only by Regulation No 491/2009, but also by national law
Summary of the arguments of the parties
In its first plea, alleging an error as to fact, the applicant disputes — with several items of evidence in support — paragraphs 18, 23 and 26 of the contested decision in so far as they state, in essence, that the name of the city that gave its name to the designation of origin ‘porto’ is Oporto. It claims that that name is used only by English speakers and Spanish speakers to designate the city of Porto, which is known to be its name in Portuguese. That error as to fact led the Board of Appeal to the erroneous conclusions disputed in the applicant’s subsequent pleas in law, and ought to be altered.
In its second plea, the applicant claims that the Board of Appeal’s factual error resulted in the incorrect finding that the terms ‘porto’ and ‘port’ are protected as geographical indications only on the basis of their being equivalent to the term ‘oporto’ (see paragraphs 14, 17 and 18 of the contested decision). The applicant states that Article 1(2) of Decreto-Lei No 166/86 de 26 de Junho de 1986 (Portuguese Decree-Law No 166/86 of 26 June 1986) provides, inter alia, that ‘are confirmed as appellations of origin, … the designations “Vinho do Porto”, “Vin de Porto”, “Port Wine”, “Porto”, “Port” (or their equivalents in other languages), which can only be used, in connection with wine products, for the liquor wine that the tradition established with that name produced in the Demarcated Region of Douro …’. In any event, on 1 August 2009, that is to say, before the initiation of the invalidity proceedings before OHIM, the list of quality wines psr was replaced by the electronic register referred to in Article 118n of Regulation No 491/2009, known as E-Bacchus (‘the E-Bacchus database’). The relevant entry in the E-Bacchus database concerning the geographical indication ‘porto’ refers to the equivalent expressions and terms ‘oporto’, ‘vinho do porto’, ‘vin de porto’, ‘port’, ‘port wine’, ‘portwein’, ‘portvin’ and ‘portwijn’ and refers to the relevant Portuguese legislation, including Decreto-Lei No 166/86, which was replaced by Decreto-Lei No 173/2009 de 3 de Agosto de 2009 (Portuguese Decree-Law No 173/2009 of 3 August 2009). The applicant submits that the Community protection for wine names established by Regulation No 1493/1999 is based on names determined by national legislation in accordance with the relevant provisions of that regulation, so that even an erroneous publication of a protected designation of origin in the list of quality wines psr is not prejudicial. Consequently, the terms ‘porto’ and ‘port’ are protected not only as ‘equivalent’, but, on the contrary, enjoy protection as an appellation of origin under the applicable Portuguese legislation and constitute, therefore, geographical indications within the meaning of, in particular, Article 118m(2) of Regulation No 491/2009.
In its third plea, the applicant disputes paragraphs 14 and 15 of the contested decision, according to which, in essence, the protection of designations of origin for wines is governed exclusively by Regulation No 491/2009 and falls within the exclusive competence of the European Union. By that approach, the Board of Appeal disregarded, unlawfully, the applicable Portuguese legislation and case-law, and failed in its duty to state reasons. Notwithstanding the case-law recognising that the aim of Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (
OJ 2006 L 93, p. 12
) is to provide a uniform and exhaustive system of protection for such indications, that regulation does not apply to wine-sector products or to spirit drinks (second subparagraph of Article 1(1) of that regulation). Thus the uniform and exhaustive system of protection under Regulation No 510/2006 does not preclude the application of a system of protection for geographical names which falls outside its scope, which is confirmed by a preparatory working document of the European Commission in relation to the Green Paper on agricultural product quality of October 2008 and by the ‘[OHIM] Opposition Guidelines — Rights under Article 8(4)’. The applicant concludes from this that the protection of designations of origin for wines is governed not only by Regulation No 491/2009, but also by national law, and that the Court must take account of the relevant provisions of Portuguese law in establishing whether the appellation of origin ‘porto’ or ‘port’ confers on its proprietor the right to prohibit the use of a subsequent trade mark.
According to OHIM and the intervener, the fact that the Board of Appeal stated, incorrectly, that the Portuguese name of the city in question was Oporto and not Porto, or referred, in error, to the list of quality wines psr that lists ‘oporto’ as the protected geographical indication, and not to the E-Bacchus database that lists ‘porto’ as the protected geographical indication, does not affect the lawfulness of the contested decision. The Board of Appeal did not rely only on the geographical indication ‘porto’ or ‘oporto’, but also took into consideration the equivalent term ‘port’ (see paragraph 22 of the contested decision), and its conclusions would not have been substantially different if it had stated expressly that the term ‘port’ constituted, in itself, a protected geographical indication and not an equivalent term.
As regards the second and third pleas, OHIM, supported by the intervener, contends that Regulation No 491/2009, applicable to the present case, constitutes the only material law defining the protection granted to the designation of origin ‘porto’. The system of protection of designations of origin and geographical indications for wines is similar to that provided for in Regulation No 510/2006. The case-law has recognised that the system of protection provided for by the latter is ‘exhaustive in nature’, and that conclusion may be applied
mutatis mutandis
to the system of protection of designations of origin and geographical indications provided for in Regulation No 491/2009. Accordingly, it is contended that, in the present case, the scope of the protection of the designation of origin ‘porto’, the existence of which is indeed recognised by Portuguese law, is governed exclusively by Regulation No 491/2009.
The alleged failure to take account of the Portuguese designation of origin ‘porto’ or ‘port’
First of all, it is clear, as OHIM and the intervener acknowledge, that the Board of Appeal was manifestly mistaken, first, in finding that the term ‘oporto’ was the Portuguese name of the harbour city of Porto situated in northern Portugal and, secondly, in referring to the entry of that term as a protected geographical indication in the list of quality wines psr (see paragraphs 17 and 18 of the contested decision) and not to the corresponding entry, including ‘Porto’, in the E-Bacchus database. It is not disputed that the Portuguese name of that city is Porto and that, even before the filing of the application for a declaration of invalidity, the database containing that entry had replaced the list of quality wines psr.
However, contrary to what the applicant claims, it none the less does not follow from those errors that the Board of Appeal infringed the relevant applicable rules on the protection of designations of origin or protected geographical indications (see paragraphs 34 to 42 below). Therefore, but without prejudice to the assessment of the second to sixth pleas, that error does not suffice, on its own, to warrant the annulment of the contested decision (see paragraph 51 below).
Furthermore, in the second and third pleas, the applicant claims, in essence, that the Board of Appeal was wrong in failing to apply, in assessing the conditions of application referred to in Article 53(1)(c) and Article 8(4) of Regulation No 207/2009, the relevant rules of Portuguese law, as implemented by the Portuguese courts and authorities, on the ground, in essence, that the scope of the protection granted to the appellation of origin ‘porto’ or ‘port’ was determined by the provisions of Regulation No 491/2009 alone.
In that context, it should be observed that it is not disputed by the parties that the terms ‘porto’ or ‘port’ enjoy protection as a designation of origin or geographical indication under both Portuguese law and Regulation No 491/2009, a point which the Board of Appeal in essence acknowledged in paragraphs 17 and 18 of the contested decision, despite having referred, incorrectly, to the term ‘oporto’ and to the list of quality wines psr. Moreover, the Board’s assessment was not limited to the latter term, but indeed also covered the terms ‘porto’ and ‘port’ (see, in particular, paragraphs 22, 24, 26 to 28, 31, 32 and 34 of the contested decision).
Furthermore, it must be noted that, in paragraph 14 of the contested decision, the Board of Appeal stated, admittedly in an imprecise manner, in essence, that even if the ‘protection’ under Regulation No 491/2009 was determined by national legislation, the ‘protection’ of the designations of origin or geographical indications in question fell within that regulation exclusively and, therefore, fell within an exclusive competence of the European Union. In the present case, that finding led the Board of Appeal to limit its review to the application of the relevant rules of EU law and to not take account of the provisions of Portuguese law, as interpreted in the decisions of the Portuguese courts and authorities, which the applicant had relied on and produced in the course of the two proceedings before OHIM.
In order to assess the legality of those considerations, the Court considers that it is appropriate first of all to examine the precise scope of the protection conferred on designations of origin and geographical indications under Regulation No 491/2009, a matter which in essence corresponds to the subject-matter of the second plea. Secondly, it will be necessary to examine whether that protection is exhaustive or whether, beyond the scope of that regulation, the Board of Appeal was nevertheless required, under Article 53(1)(c), read in conjunction with Article 8(4), and Article 53(2)(d) of Regulation No 207/2009, to apply the relevant rules of Portuguese law, a point which coincides, in essence, with the subject-matter of the third plea.
The scope of the protection conferred by Regulation No 491/2009 itself
As regards the scope of the protection conferred by Regulation No 491/2009 itself, it is clear from Article 118s(1) thereof that wine names protected in accordance with, inter alia, Articles 51 and 54 of Regulation No 1493/1999 ‘shall automatically be protected under th[at] [r]egulation’ and that ‘[t]he Commission shall list them in the register provided for in Article 118n of … Regulation [No 491/2009]’, namely in the E-Bacchus database. As has been recognised in settled case-law, it follows from the automatic nature of the protection of wine names already protected under Regulation No 1493/1999 that an entry in the E-Bacchus database is not necessary for those wine names to benefit from protection in the European Union, since that entry is only a consequence of the automatic transition of the pre-existing protection from one regulatory regime to another, and not a condition of that protection (see, to that effect, judgment of 8 November 2012 in
Hungary
v
Commission
, T‑194/10,
EU:T:2012:587
, paragraph 21, confirmed by judgment of 13 February 2014 in
Hungary
v
Commission
, C‑31/13 P, ECR,
EU:C:2014:70
, paragraph 58). However, as OHIM contends, in the present case, the Board of Appeal correctly proceeded on the assumption that that ‘automatic’ protection, although based directly on the relevant national legislation, did not necessarily mean that OHIM was obliged, under Regulation No 491/2009, to comply with the provisions of that legislation or the conditions for protection laid down by it. Indeed, the expressions ‘protected designations of origin’ and ‘protected geographical indications’ used in Article 118m(1) and (2) of Regulation No 491/2009 merely repeat those used in Article 118n of that regulation, which refers only to the designations of origin and geographical indications listed in the E-Bacchus database, including those stemming from national legislation, but do not prescribe the application of the conditions for protection established by the relevant rules of that legislation.
On the contrary, in accordance with the spirit and system of the single regulatory framework of the common agricultural policy (recital 1 in the preamble to Regulation No 491/2009; see also, to that effect and by analogy with Regulation No 510/2006, judgment of 8 September 2009 in
Budějovický Budvar
, C‑478/07, ECR,
EU:C:2009:521
, paragraph 107 et seq.), as regards the scope of Regulation No 491/2009, the precise conditions and scope of that protection are laid down exclusively in Article 118m(1) and (2) of that regulation.
That article provides, inter alia, as follows:
‘1.
Protected designations of origins and protected geographical indications may be used by any operator marketing a wine which has been produced in conformity with the corresponding product specification.
2.
Protected designations of origins and protected geographical indications and the wines using those protected names in conformity with the product specification shall be protected against:
(a)
any direct or indirect commercial use of a 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 or accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation”, “flavour”, “like” or similar;
…
(d)
any other practice liable to mislead the consumer as to the true origin of the product.’
In the present case, it is not disputed that the designations of origin ‘porto’ or ‘port’ enjoy protection on the basis of Decreto-Lei No 173/2009 and Decreto-Lei No 212/2004 de 23 de Agosto de 2004 (Portuguese Decree-Law No 212/2004 of 23 August 2004), and the Portuguese Intellectual Property Code, which resulted in their entry, first, in the list of quality wines psr and, subsequently, in the E-Bacchus database (see last sentence of Article 118s(l), read in conjunction with Article 118n of Regulation No 491/2009). Under Article 54(2)(a) of Regulation No 1493/1999, the quality wines psr covered ‘“quality liqueur wines produced in specific regions”, hereinafter called “quality liqueur wines psr”, which compl[ied] with the definition of liqueur wine’, with respect to which, under Article 54(4) of that regulation, Member States were required to forward to the Commission the list of quality wines psr recognised stating, for each of those quality wines psr, details of the national provisions governing the production and manufacture of those quality wines psr. Therefore, for the purposes of applying Article 118m(2) of Regulation No 491/2009, it was incumbent on OHIM to take account of the fact that those designations of origin were protected under national law, which the Board of Appeal did in fact do in the present case (see paragraphs 17 and 18 of the contested decision). Moreover, that assessment is not called into question by the argument regarding the coexistence of systems of protection at national and EU level, which the applicant derives, inter alia, from certain preparatory documents of the Commission (see paragraph 28 above), since those documents relate neither to the scope of, nor to the precise conditions for, that protection.
It must accordingly be concluded that, as regards the scope of Regulation No 491/2009, Article 118m(1) and (2) governs, in a uniform and exclusive manner, both the authorisation of and limits to, and even the prohibition of, commercial use of the protected designations of origin and of the protected geographical indications under EU law, so that, in that specific context, there was no need for the Board of Appeal to apply the conditions for protection specifically established in the relevant rules of Portuguese law which were the basis for the entry of the appellations of origin ‘porto’ or ‘port’ in the E-Bacchus database.
Consequently, in so far as the applicant complains, in the second plea, that the Board of Appeal failed to take account of the fact that the terms ‘porto’ and ‘port’ constituted appellations of origin protected by Portuguese law, for the purposes of Article 118m(2) of Regulation No 491/2009, that plea cannot succeed.
Nevertheless, that conclusion is without prejudice to the question — raised, in particular, in the third plea — whether the protection under Article 118m(1) and (2) of Regulation No 491/2009 may be supplemented by another system of protection under EU law which, for its part, includes protection based on rules of national law.
The scope of the protection conferred by Article 53(1)(c), read in conjunction with Article 8(4), and by Article 53(2) of Regulation No 207/2009
As regards the allegedly exhaustive nature of the protection conferred by Article 118m(1) and (2) of Regulation No 491/2009, as recognised by the Board of Appeal and relied on by OHIM, it is clear that neither the provisions of Regulation No 491/2009, nor those of Regulation No 207/2009, state that the protection under the former must be construed as being exhaustive in the sense that that protection cannot be supplemented, beyond its particular scope, by another system of protection. On the contrary, it follows from the unequivocal wording of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof, and from that of Article 53(2)(d) of that regulation, that the grounds for invalidity may be based, individually or cumulatively, on earlier rights ‘under the [EU] legislation or national law governing [their] protection’. It follows that the protection conferred on (protected) designations of origin and geographical indications under Regulation No 491/2009, provided that they are ‘earlier rights’ within the meaning of the abovementioned provisions of Regulation No 207/2009, may be supplemented by the relevant national law granting additional protection.
The case-law has already recognised that it is apparent from the wording of Article 8(4), applicable pursuant to Article 53(1)(c), and from that of Article 53(2) of Regulation No 207/2009, that a clear distinction must be drawn between two situations, depending on whether the earlier right is protected under the EU legislation ‘or’ under national law (see, to that effect, judgments of 5 July 2011 in
Edwin
v
OHIM
, C‑263/09 P, ECR,
EU:C:2011:452
, paragraph 48, and 7 May 2013 in
macros consult
v
OHIM — MIP Metro (makro)
, T‑579/10, ECR,
EU:T:2013:232
, paragraphs 57 and 60). Furthermore, although the applicant for a declaration of invalidity bears the burden of proving that he is entitled, under the national law applicable, to lay claim to an earlier right, which requires that he provide not only particulars showing that he satisfies the necessary conditions, in accordance with that national law, in order to be able to have the use of a Community trade mark prohibited by virtue of such a right, but also particulars establishing the content and scope of that law, the fact remains that the competent OHIM bodies must first assess the weight and scope of those particulars (see, to that effect, judgments in
Edwin
v
OHIM
, cited above,
EU:C:2011:452
, paragraphs 49 to 51, and
makro
, cited above,
EU:T:2013:232
, paragraphs 59, 60 and 62).
Moreover, under Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof, where a sign other than a mark exists it is possible to obtain a declaration that a Community trade mark is invalid if that sign satisfies all of four conditions: the sign must be used in the course of trade; it must be of more than mere local significance; the right to that sign must have been acquired in accordance with the law of the Member State in which the sign was used prior to the date of application for registration of the Community trade mark; the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Although the first two conditions, namely those relating to the use of and not merely local significance of the sign relied on, follow from the very wording of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law, it follows from the phrase ‘where and to the extent that, pursuant to the law of the Member State governing that sign’, that the other two conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation No 207/2009, constitute conditions laid down by the regulation which must be assessed in the light of the criteria set by the law governing the sign relied on (see, to that effect, judgment in
makro
, cited in paragraph 45 above,
EU:T:2013:232
, paragraphs 54 to 56 and the case-law cited).
The question of the extent to which a sign which is protected in a Member State confers the right to prohibit the use of a subsequent trade mark must be examined in the light of the applicable national law. In this connection, account must be taken, in particular, of the national legislation relied on and the judicial decisions delivered in the Member State concerned. On that basis, the opponent must establish that the sign in question falls within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited (judgments of 29 March 2011 in
Anheuser-Busch
v
Budějovický Budvar
, C‑96/09 P, ECR,
EU:C:2011:189
, paragraph 190; 10 July 2014 in
Peek & Cloppenburg
v
OHIM
, C‑325/13 P and C‑326/13 P,
EU:C:2014:2059
, paragraph 47; 18 April 2013 in
Peek & Cloppenburg
v
OHIM — Peek & Cloppenburg (Peek & Cloppenburg)
, T‑507/11,
EU:T:2013:198
, paragraphs 20 and 21; and 10 February 2015 in
Infocit
v
OHIM — DIN (DINKOOL)
, T‑85/14,
EU:T:2015:82
, paragraph 63).
In the present case, it is apparent from the documents before the Court that, both in the course of the proceedings before OHIM and in the present proceedings, the applicant repeatedly invoked, with various items of evidence in support, the relevant rules of Portuguese law governing the protection of the appellations of origin ‘porto’ and ‘port’ and the decision-making practice of the Portuguese courts and authorities in that regard. Furthermore, neither the Board of Appeal nor OHIM has asserted that the applicant has not discharged the burden of proof borne by it in this connection. In those circumstances, having regard to its duty to examine the facts of its own motion under Article 76(1) of Regulation No 207/2009 and to its duty of diligence (see, to that effect, judgment of 15 July 2011 in
Zino Davidoff
v
OHIM — Kleinakis kai SIA (GOOD LIFE)
, T‑108/08, ECR,
EU:T:2011:391
, paragraph 19 and the case-law cited), the Board of Appeal was not entitled to dismiss that evidence and fail to apply the Portuguese legislation in question, on the ground that the protection of those designations of origin or geographical indications fell within Regulation No 491/2009 exclusively, and indeed the exclusive competence of the European Union (paragraph 14 of the contested decision).
Consequently, the Board of Appeal’s approach proceeds from a manifest misinterpretation of the scope of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof, and of Article 53(2)(d) of that regulation, which vitiates the legality of the contested decision.
The third plea must therefore be upheld, there being no need to rule on the parties’ arguments based on Regulation No 510/2006, which is not applicable to the present case.
On the other hand, in view of the ineffective nature of the argument put forward by the applicant in support of the first plea — that the Board of Appeal concluded, incorrectly, that the terms ‘porto’ and ‘port’ were protected only as terms equivalent to ‘oporto’ — to show that the contested decision was vitiated by illegality (see paragraph 34 above), the first plea must be rejected.
Lastly, for the reasons set out in paragraphs 37 to 42 above, the second plea must also be rejected.
The Court considers however that it is necessary to examine the fourth, fifth and sixth pleas.
The fourth plea, regarding infringement of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof
Summary of the arguments of the parties
In the present plea in law, in the first place, the applicant complains that the Board of Appeal dismissed, unlawfully, the evidence submitted by it showing that the contested mark infringed the relevant provisions of Portuguese law protecting the appellation of origin ‘porto’ or ‘port’, on the ground that the complaints based on Article 8(4) of Regulation No 207/2009 had to be dismissed
in limine
. In the second place, in so doing, the Board of Appeal misinterpreted the scope of the protection conferred on that appellation of origin under those provisions. In the third place, the applicant claims that the contested decision is incompatible with the previous decision-making practice of OHIM in opposition cases concerning port wine. In the fourth place, even if Portuguese law does not confer on the applicant the right to prohibit the use of the contested mark, such a prohibition would follow from Article 118m(2)(a)(i) of Regulation No 491/2009, since whisky is a product comparable to fortified wine, such as port wine. Furthermore, even if the goods in question are not ‘comparable’, that provision prohibits the contested mark exploiting the reputation of the appellation of origin ‘porto’ or ‘port’. Moreover, Article 118m(2)(b) of Regulation No 491/2009 protects the applicant against the use of the contested mark in so far as the word ‘port’ involves an ‘imitation or [an] evocation’ of the appellation of origin ‘porto’ or ‘port’. The applicant submits that, in view of the well-known character of that appellation of origin, an average consumer seeing the expression ‘port charlotte’ displayed on a bottle containing an alcoholic beverage would be led to believe that the beverage in question is related to port wine or, at least, to wonder whether it is, which involves an evocation of that appellation of origin.
OHIM, supported by the intervener, contends that the Board of Appeal was fully entitled to find that the contested mark did not fall within any of the situations referred to in Article 118m(2)(a) to (c) of Regulation No 491/2009 and that, therefore, the present plea in law must be rejected.
The relevant public
First of all, it should be noted that, in the contested decision, the Board of Appeal took account, at least by implication and in part, of the perception of the average Portuguese consumer (see paragraph 26 of the contested decision). That assessment is disputed by the applicant and by the intervener, who submit that, in the present case, reference must be made to the average consumer in the European Union.
Given that both port wine and whisky are goods of mass consumption marketed in all Member States of the European Union and that consumers in those countries are all likely to recognise the names and the particular qualities of those goods, that argument must be upheld.
However, it does not necessarily follow that the contested decision is vitiated by illegality for having misidentified the relevant public. That would be the case only where the result of the assessment made by the Board of Appeal was liable to vary according to the origins or linguistic capabilities of the relevant public, which should be assessed in the context of each plea separately.
It must therefore be concluded that the relevant public, of which account must be taken, in particular, in the context of the present plea in law, consists of the average consumer in the European Union.
That plea in law is divided in essence into two parts, the first alleging that the Board of Appeal failed to apply the relevant rules of Portuguese law, and the second that Article 118m(2) of Regulation No 491/2009 was misapplied.
The first part, alleging that the Board of Appeal failed to apply Portuguese law
As regards the first part, alleging, inter alia, a failure to apply the relevant rules of Portuguese law and to examine the evidence provided in support, which to a large extent overlaps the third plea, suffice it to refer to the considerations set out in paragraphs 44 to 50 above and to state that, contrary to the requirements arising from Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof, the Board of Appeal, in the present case, limited its assessment to the conditions laid down in Article 118m(2) of Regulation No 491/2009 and disregarded those rules of Portuguese law and that evidence. It thus unlawfully failed to rule on the scope of the protection that might be conferred on the ‘earlier rights’ under the relevant Portuguese law, namely the appellations of origin ‘porto’ or ‘port’, the application of which was however required under Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof.
On those grounds alone the first part should be upheld, there being no need to assess whether the conditions for protection under the applicable Portuguese legislation were satisfied in the present case (see also paragraphs 109 and 110 below).
The second part, regarding infringement of Article 118m(2) of Regulation No 491/2009
In the context of the second part, it is necessary to examine, in the first place, whether the registration or use of the contested mark constitutes a ‘direct or indirect commercial use’ of the designation of origin ‘porto’ or ‘port’ by comparable products not complying with the product specification of that designation of origin, within the meaning of Article 118m(2)(a)(i) of Regulation No 491/2009.
In this connection, it should be noted that the Board of Appeal stated, in essence, that the geographical indications within the meaning of that provision 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 (paragraph 20 of the contested decision).
That assessment is not vitiated by error, given that a spirit, the product of the alcoholic fermentation of grains, such as whisky, is, by definition, incapable of satisfying the conditions of a product specification for a wine, the product of the alcoholic fermentation of grapes, within the meaning of Article 118m(2)(a)(i) of Regulation No 491/2009, read in conjunction with Article 118c(2) thereof.
In this connection, the applicant’s argument that the reference to the ‘product specification’ concerns the protected goods only and not the goods at issue, since the latter may be comparable products including spirits, cannot be upheld. Article 118m(2)(a)(i) of Regulation No 491/2009 clearly requires that ‘comparable products’ be ‘comparable products not complying with the product specification’, something which is possible only for a wine or for a liqueur wine (see paragraphs 1 to 3 of Annex IV to Council Regulation (EC) No 479/2008 of 29 April 2008 on the common organisation of the market in wine, amending Regulations (EC) No 1493/1999, (EC) No 1782/2003, (EC) No 1290/2005, (EC) No 3/2008 and repealing Regulations (EEC) No 2392/86 and (EC) No 1493/1999 (
OJ 2008 L 148, p. 1
)), and not for a spirit such as whisky. As OHIM correctly contends, that is all the more true, since it is apparent from the relevant provisions of Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on 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
), that spirit drinks are subject to a system of protection separate from that of wines and must meet different requirements in order to be eligible for such protection (see Article 5 of that regulation).
Consequently, the first complaint, regarding infringement of Article 118m(2)(a)(i) of Regulation No 491/2009, must be rejected, there being no need, at this stage, to decide whether whisky and liqueur wines, such as port, are comparable.
In the second place, as regards the alleged infringement of Article 118m(2)(a)(ii) of Regulation No 491/2009, it must be noted that the Board of Appeal found, in essence, that the contested mark neither ‘use[d]’ nor ‘evoke[d]’ the geographical indications ‘porto’ or ‘port’, so that it was not necessary to verify whether they had a reputation. Those terms also formed an integral part of the compound names of a large number of cities, such as Porto Allegre or Port Louis. Furthermore, the Board of Appeal found that it was not possible to establish a link between the sign PORT CHARLOTTE, the two elements of which would designate a harbour named after a person called Charlotte, a geographical place or a city situated at the seaside, on the one hand, and the geographical name Porto or Port, on the other, which the Portuguese consumer would recognise as referring to the wine protected under that geographical name.
Under Article 118m(2)(a)(ii) of Regulation No 491/2009, the designations of origin and geographical indications concerned are protected against any direct or indirect commercial use in so far as such use exploits their reputation.
In this connection, first, it must be observed that the protected appellation of origin of which the applicant is the proprietor, and which is entered in the E-Bacchus database, covers the names ‘oporto’, ‘portvin’, ‘portwein’, ‘portwijn’, ‘vin de porto’, ‘port wine’, ‘port’, ‘vinho do porto’ and ‘porto’. Consequently, it includes names, in different languages, composed either of two elements, namely ‘port’ or ‘porto’ and ‘wine’ or of a single element, namely ‘oporto’ or ‘porto’. Secondly, as OHIM submits, account should be taken of the fact that the contested mark also consists of an expression composed of two elements, namely ‘port’ and ‘charlotte’, which, like the expression ‘port wine’, must be understood as forming a logical and conceptual unit (see, to that effect, judgment of 18 December 2008 in
Torres
v
OHIM — Vinícola de Tomelloso (TORRE DE GAZATE)
, T‑286/06,
EU:T:2008:601
, paragraph 55).
However, unlike the protected appellation of origin in question, the contested mark does not refer expressly to a wine, but to the female first name Charlotte, which is directly associated with the element ‘port’, the primary meaning of which, in a number of European languages, including English and Portuguese, is harbour, namely a place situated on the coast or on a river. Therefore, as the Board of Appeal correctly found in paragraph 24 of the contested decision, the sign PORT CHARLOTTE, read as a whole as a logical and conceptual unit, will be understood by the relevant public as designating a harbour named after a person called Charlotte, with no direct link being made with the designation of origin ‘porto’ or ‘port’ or a port wine. As the intervener contends, that is all the more true since the term ‘charlotte’ is the most important and most distinctive element of the contested mark, immediately attracting the attention of the relevant public. The latter will not identify the element ‘port’ as an element distinct or separable from the term ‘charlotte’, but as a qualifier directly related to that term conveying the message that the contested mark refers to a location on the coast or on a river. That assessment applies for any average consumer in the European Union with at least a basic knowledge of English or a Romance language.
The Board of Appeal did not therefore err in concluding, in paragraph 22 of the contested decision, that the contested mark neither used nor evoked the designation of origin in question, so that it was not necessary to verify whether it had a reputation.
Consequently, the complaint regarding infringement of Article 118m(2)(a)(ii) of Regulation No 491/2009 must be rejected.
In the third place, as regards the alleged infringement of Article 118m(2)(b) of Regulation No 491/2009, it should be noted that, in essence, the Board of Appeal concluded that there was no ‘evocation’ of a port wine within the meaning of that provision, since whisky is a different product and there was no potentially misleading or confusing statement in the contested mark (paragraph 28 of the contested decision).
In this connection, suffice it to refer to the considerations set out in paragraph 71 above to find that the use of the contested mark does not involve ‘misuse, imitation or evocation’ of the designation of origin ‘porto’ or ‘port’ within the meaning of Article 118m(2)(b) of Regulation No 491/2009.
That conclusion is not called into question by the applicant’s arguments. In particular, it cannot validly rely on the case-law stating, first, that the concept of evocation covers a situation in which the term used to designate a product incorporates part of a protected designation, so that when the consumer sees the name of the product, the image that comes to mind is that of the product whose designation is protected (see judgment of 14 July 2011 in
Bureau national interprofessionnel du Cognac
, C‑4/10 and C‑27/10, ECR,
EU:C:2011:484
, paragraph 56 and the case-law cited), and, secondly, that it is possible for a designation of origin to be evoked where there is no likelihood of confusion between the products concerned (see judgment of 26 February 2008 in
Commission
v
Germany
, C‑132/05, ECR,
EU:C:2008:117
, paragraph 45 and the case-law cited). In the present case, on the contrary, for the reasons set out in paragraph 71 above, even if 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. 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 rightly drew attention in paragraphs 20 and 34 of the contested decision (see also paragraph 65 above).
Therefore, the complaint regarding infringement of Article 118m(2)(b) of Regulation No 491/2009 must be rejected also.
Lastly, the applicant’s complaint that the contested decision goes against OHIM’s decision-making practice in similar opposition proceedings (see paragraph 54 above) must be rejected. According to established case-law, the decisions which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of those boards or OHIM (see, to that effect and by analogy, orders of 13 February 2008 in
Indorata-Serviços e Gestão
v
OHIM
, C‑212/07 P,
EU:C:2008:83
, paragraph 43, and 15 February 2008 in
Brinkmann
v
OHIM
, C‑243/07 P,
EU:C:2008:94
, paragraph 39 and the case-law cited), without prejudice to OHIM’s duty to take into account, when examining an application for a declaration of invalidity, the decisions already taken in the context of similar proceedings and to consider with especial care whether it should decide in the same way or not (see, to that effect and by analogy, judgments of 10 March 2011 in
Agencja Wydawnicza Technopol
v
OHIM
, C‑51/10 P, ECR,
EU:C:2011:139
, paragraph 74, and 12 December 2014 in
Wilo
v
OHIM (Pioneering for You)
, T‑601/13,
EU:T:2014:1067
, paragraph 41).
Even if that complaint had to be understood as alleging a breach of that duty to examine or of the principle of equal treatment, the way in which that duty and that principle are applied must be consistent with respect for legality, from which it follows that no one may rely, to his advantage and in order to secure an identical decision, on an unlawful act committed for the benefit of someone else. Accordingly, a person who files an application for a declaration that a Community trade mark is invalid cannot claim before OHIM the benefit of a decision-making practice which would be contrary to the requirements imposed by Regulation No 207/2009 or which would lead OHIM to take an unlawful decision (see, to that effect and by analogy, order of 12 February 2009 in
Bild digital and ZVS
, C‑39/08 and C‑43/08,
EU:C:2009:91
, paragraph 18, and judgments in
Agencja Wydawnicza Technopol
v
OHIM
, cited in paragraph 78 above,
EU:C:2011:139
, paragraphs 75 and 76, and
Pioneering for You
, cited in paragraph 78 above,
EU:T:2014:1067
, paragraph 42).
Therefore, that last complaint cannot succeed.
In the light of all the foregoing considerations, the second part of the present plea in law must be rejected in its entirety.
The fifth plea, regarding infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(g) thereof
In support of the present plea in law, the applicant states, in essence, that the average Portuguese consumer and the average consumer in other Member States, including the United Kingdom, are familiar with the designation ‘port’ for port wines and that it is quite usual for port wine trade marks to be composed of two words, of which one is ‘port’ (DOW’S PORT, FERREIRA PORT, GRAHAM PORT), which is sometimes placed at the beginning of the mark (PORT FOR TWO). That consumer is also familiar with that word being displayed on the labels of port wine bottles in prominent characters. Given that the colour of white port resembles that of whisky, the applicant claims that it is more than likely that the consumer, faced with a bottle of whisky bearing the mark PORT CHARLOTTE, would conclude that it is a bottle of port wine. The contested mark, which contains the word ‘port’, therefore has the effect of deceiving the consumer as to the geographical origin by leading him to think that the goods bearing that mark contain port wine or are somehow associated with port wine.
OHIM, supported by the intervener, contends that the ground for refusal set out in Article 7(1)(g) of Regulation No 207/2009 presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived, which is not the situation in the present case.
Under Article 7(1)(g) of Regulation No 207/2009, read in conjunction with Article 52(1)(a) thereof, trade marks ‘which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods’ in question are not to be registered or are to be declared invalid.
The Board of Appeal found that the contested mark was not liable to deceive the public as to geographical origin, since the term ‘port’ did not designate a geographical region and the contested mark was not associated with the region in which the applicant’s products are produced. A deception would be less possible still since the consumer would easily recognise that whisky has different characteristics from those of the applicant’s products (paragraph 34 of the contested decision).
The Court finds that that assessment is not vitiated by error.
As OHIM contends, according to settled case-law, the circumstances for refusing registration and the grounds for invalidity referred to in Article 7(1)(g) of Regulation No 207/2009, read in conjunction with Article 52(1)(a) thereof, presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (see, to that effect and by analogy, judgment of 5 May 2011 in
SIMS — École de ski internationale
v
OHIM — SNMSF (esf école du ski français)
, T‑41/10,
EU:T:2011:200
, paragraph 49 and the case-law cited). However, for the reasons set out in paragraphs 71 and 76 above, whatever the origins and linguistic capabilities of the relevant public, that public is not liable to associate the mere term ‘port’ in the contested mark with the designation of origin ‘porto’ or ‘port’ or with a liqueur wine bearing that name. Therefore, the relevant public will clearly be even less likely to be misled as to the nature, quality or geographical origin of a whisky marketed under that mark. As the intervener contends, that is all the more true since, unlike Scotland, Portugal, or at least the region in which the city of Porto is situated, is not known by the relevant public to be a region in which whisky is produced.
Therefore, the present plea in law must be rejected as unfounded.
The sixth plea, regarding infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) thereof
Summary of the arguments of the parties
The applicant claims that, even if the application for a declaration of invalidity was not based on the absolute ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009, it was not aware that there was a place called Port Charlotte until the intervener’s observations were filed on 17 October 2011, and that the applicant relied on that ground before the Cancellation Division in its observations in reply of 20 December 2011. The Board of Appeal did not assess, however, the crucial question of whether there was a public interest in terms descriptive of a geographical origin remaining freely available for use. Yet if, according to the intervener, a part of the relevant public understands that the mark PORT CHARLOTTE refers to ‘a genuine and expected location for the supply of whisky’, that ground for refusal ought to apply, since the contested mark is composed exclusively of a sign which may serve, in trade, to designate the geographical origin of the goods in question.
According to OHIM, the present plea in law is inadmissible. Even though the applicant submitted arguments on this point during the invalidity proceedings, that ground did not form the subject-matter of the application for a declaration of invalidity. The Board of Appeal therefore correctly treated that ground as an inadmissible extension of the grounds for cancellation.
A fortiori
, the applicant is not permitted to raise that ground before the Court. The intervener adds, in essence, that the expression ‘port charlotte’ is not one well known to the consumer of whisky and that the applicant has also not proved possible knowledge of the contested mark, so that the Board of Appeal was fully entitled to find that the applicant had not substantiated its arguments.
Admissibility of the present plea in law
OHIM contends, in essence, that the present plea in law is inadmissible on the ground that the claim that the registration of the contested mark was contrary to Article 7(1)(c) of Regulation No 207/2009 had not been raised in the application for a declaration of invalidity and, therefore, did not form part of the subject-matter of the dispute brought before the Cancellation Division.
That plea of inadmissibility cannot succeed.
First, although admittedly it is not disputed that the application for a declaration of invalidity, as filed with the Cancellation Division, did not refer to the absolute ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009, the fact remains that the applicant had raised such a ground before that very department, in referring to the judgment of 4 May 1999 in
Windsurfing Chiemsee
(C‑108/97 and C‑109/97, ECR,
EU:C:1999:230
), in its observations on the intervener’s response in which the latter had contended, in essence, that the expression ‘port charlotte’ was ‘the known location of a specific distillery on the island of Islay’.
Secondly, the Cancellation Division, in paragraphs 40 to 49 of its decision, expressly addressed that argument and rejected it as unfounded, on the ground, inter alia, that the evidence submitted did not establish that the average consumer of whisky was familiar with the locality of Port Charlotte at the time of the filing of the application for registration of the contested mark (paragraph 48 of the Cancellation Division’s decision).
Thirdly, in its appeal before the Board of Appeal, the applicant expressly raised a ground of appeal regarding infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) thereof, claiming that the Cancellation Division’s assessment in that regard was incorrect. Moreover, at paragraph 35 of the contested decision, notwithstanding the statement that the applicant had raised that ground ‘only on appeal’, the Board of Appeal in fact assessed and rejected that ground of appeal on the substance having found that the argument put forward by the applicant was contradictory in that it referred at the same time to a place (existing or imaginary) called Port Charlotte and to the ‘city of Oporto (Porto)’, and that the Cancellation Division had been fully entitled to find that the applicant had failed to produce evidence to show that a place or a city called Port Charlotte was known to the average consumer. Therefore, having regard to the wording of paragraph 35 of the contested decision, OHIM is wrong in stating that the Board of Appeal treated that ground merely as ‘an inadmissible extension of the grounds for cancellation’. Lastly, that assessment cannot be called into question by the erroneous conclusion in paragraph 38 of the contested decision that the ground regarding Article 7(1)(c) of Regulation No 207/2009 had never been part of the subject-matter of the invalidity proceedings and that the applicant was not entitled to raise it in its appeal filed with the Board of Appeal.
Clearly, therefore, in accordance with Article 135(1) of Regulation No 207/2009, following the filing of the appeal by the applicant against the decision of the Cancellation Division, the Board of Appeal was seised of the subject-matter of the dispute, as defined by that decision and by the grounds put forward in support, and ruled in that regard, at least for the sake of completeness. In that context, OHIM cannot usefully rely on the judgment of 13 January 2011 in
Park
v
OHIM — Bae (PINE TREE)
(T‑28/09,
EU:T:2011:7
, paragraph 46), from which it is clear merely that an application for invalidity cannot be put forward for the first time before the Board of Appeal, which is not the situation in the present case. On the contrary, that judgment confirms that it is for the Cancellation Division to decide, in the first instance, on the application for a declaration of invalidity, as defined by the various applications and the various procedural documents of the parties (see, to that effect, judgment in
PINE TREE
, cited above,
EU:T:2011:7
, paragraph 46 and the case-law cited), including, in the present case, the applicant’s observations on the response of the intervener filed with the Cancellation Division.
Accordingly, since the appraisal of the ground regarding infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) thereof, was raised and assessed in the context of the two proceedings before OHIM and the applicant relied on that very ground before this Court, this Court is seised of that ground under Article 65 of that regulation and is required to rule on its substance.
Consequently, the present plea in law must be declared admissible.
The substance of the present plea in law
It should be recalled that, under Article 7(1)(c) of Regulation No 207/2009, applicable to the present case pursuant to Article 52(1)(a) thereof, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered.
Those descriptive signs or indications are deemed incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquires the goods or service designated by the mark to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (judgment of 23 October 2003 in
OHIM
v
Wrigley
, C‑191/01 P, ECR,
EU:C:2003:579
, paragraph 30; see also judgment of 13 September 2013 in
Fürstlich Castell’sches Domänenamt
v
OHIM — Castel Frères (CASTEL)
, T‑320/10, ECR (Extracts),
EU:T:2013:424
, paragraph 40 and the case-law cited).
Furthermore, the public interest underlying Article 7(1)(c) of Regulation No 207/2009 is that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services (see, to that effect, judgments in
OHIM
v
Wrigley
, cited in paragraph 100 above,
EU:C:2003:579
, paragraph 31, and
Agencja Wydawnicza Technopol
v
OHIM
, cited in paragraph 78 above,
EU:C:2011:139
, paragraph 37).
As regards, more particularly, signs or indications which may serve to designate the geographical origin of the categories of goods in respect of which registration of the mark is sought, especially geographical names, it is in the public interest that these remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer preferences by, for instance, associating the goods with a place that may give rise to a favourable response (see judgment in
CASTEL
, cited in paragraph 100 above,
EU:T:2013:424
, paragraph 43 and the case-law cited).
The registration of geographical names as trade marks where they designate specified geographical locations which are already famous or known for the category of goods concerned, and which are therefore associated with those goods in the mind of the relevant class of persons, is excluded, as is the registration of geographical names which are liable to be used by undertakings and must remain available to such undertakings as indications of the geographical origin of the category of goods concerned (see judgment in
CASTEL
, cited in paragraph 100 above,
EU:T:2013:424
, paragraph 44 and the case-law cited).
However, Article 7(1)(c) of Regulation No 207/2009 does not in principle preclude the registration of geographical names which are unknown to the relevant class of persons — or at least unknown as the designation of a geographical location — or of names in respect of which, because of the type of place they designate, such persons are unlikely to believe that the category of goods or services concerned originates there or was conceived of there (see judgment in
CASTEL
, cited in paragraph 100 above,
EU:T:2013:424
, paragraph 45 and the case-law cited).
Consequently, it is necessary, in order to assess whether a sign is likely, in the minds of the relevant class of persons, to designate the geographical origin of the category of goods concerned, to establish whether the geographical name in question designates a place which is currently associated in the minds of the relevant class of persons with the category of goods concerned, or whether it is reasonable to assume that such an association may be established in the future. To that end, regard must be had to the degree to which such persons are familiar with that name, with the characteristics of the place designated by the name, and with the category of goods concerned (see judgment in
CASTEL
, cited in paragraph 100 above,
EU:T:2013:424
, paragraph 46 and the case-law cited).
It must be stated that, as the Board of Appeal observed in paragraph 35 of the contested decision and as OHIM and the intervener contend, in the present case — leaving aside the intervener’s unsubstantiated statement that the expression ‘port charlotte’ is ‘the known location of a specific distillery on the island of Islay’ — the applicant has failed to show that the expression ‘port charlotte’ designated a geographical location that is already famous or known to the relevant class of persons for whisky, and that there is a need for that expression to remain available for other producers of whisky of the same origin as an indication of geographical origin. On the contrary, the applicant has itself acknowledged that, initially, it did not raise the absolute ground for refusal under Article 7(1)(c) of Regulation No 207/2009 because it was not aware that the contested mark referred to such a specific place. Similarly, the applicant has not established that the contested mark was likely to be used as the designation of a geographical location for other whiskies or that, whatever the origins and linguistic capabilities of the relevant public, the relevant class of persons might, depending on the circumstances, in the future, establish an association with that category of goods. Therefore, it has not been established that it is in the public interest that the expression ‘port charlotte’ remain available to designate whiskies other than those produced by the intervener, or that there is a need for such a name to be freely available to other producers of whisky.
On those grounds, the present plea in law must be rejected as unfounded.
Interim conclusion
In the light of all the foregoing considerations, having regard to the illegalities found in the assessment of the third and fourth pleas, which are based on the failure by the Board of Appeal to apply the relevant rules of Portuguese law (see paragraphs 50 and 62 above), the contested decision must be annulled.
The claim for alteration
As regards the applicant’s second head of claim, for alteration of the contested decision, suffice it to recall that the review the Court carries out under Article 65 of Regulation No 207/2009 is a review of the legality of the decisions of the Boards of Appeal of OHIM and that it may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration set out in Article 65(2) of that regulation. It follows that the power of the Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment in
Edwin
v
OHIM
, cited in paragraph 45 above,
EU:C:2011:452
, paragraphs 71 and 72).
Therefore, in the context of the application of Article 8(4) of Regulation No 207/2009, the Court cannot, in the present case, itself assess whether the applicant may rely on specific earlier rights under the rules of Portuguese law. It should be recalled that both the existence and the scope of a national right constitute questions of fact that are governed by the principles of the burden of proof, the taking of evidence and of the unfettered assessment of that evidence (see, to that effect and by analogy, judgments in
Edwin
v
OHIM
, cited in paragraph 45 above,
EU:C:2011:452
, paragraphs 49 to 51, and
makro
, cited in paragraph 45 above,
EU:T:2013:232
, paragraphs 62 to 65). Consequently, this Court cannot substitute its own interpretation of Portuguese law for that which the Board of Appeal ought to have made on the basis of the various items of evidence, in particular, the relevant decisions of the Portuguese courts, which the applicant submitted in the course of the two proceedings before OHIM, that is to say, before the adoption of the contested decision.
Consequently, the claim for alteration must be rejected.
Costs
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.
Moreover, under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. On the other hand, costs incurred for the purposes of the proceedings before the Cancellation Division do not constitute recoverable costs; therefore, to that extent, the applicant’s claim cannot succeed.
Since OHIM has been unsuccessful, it must be ordered to pay the costs, including those incurred in the proceedings before the Board of Appeal, in accordance with the form of order sought by the applicant.
The intervener shall bear its own costs in accordance with Article 138(3) of the Rules of Procedure.

On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:

1.
Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 8 July 2014 (Case R 946/2013-4) relating to invalidity proceedings between Instituto dos Vinhos do Douro e do Porto, IP and Bruichladdich Distillery Co. Ltd;

2.
Dismisses the action as to the remainder;

3.
Orders OHIM to pay the costs, including those incurred in the proceedings before the Board of Appeal;

4.
Orders Bruichladdich Distillery to bear its own costs.

Prek
Labucka
Kreuschitz
Delivered in open court in Luxembourg on 18 November 2015.
[Signatures]
Table of contents

Background to the dispute

Forms of order sought

Law

Summary of the pleas for annulment

The first, second and third pleas, based on error as to fact concerning the name Oporto, the fact that the terms ‘porto’ and ‘port’ are protected as geographical indications per se and not as ‘equivalent terms’, and on the fact that the protection of designations of origin for wines is governed not only by Regulation No 491/2009, but also by national law

Summary of the arguments of the parties

The alleged failure to take account of the Portuguese designation of origin ‘porto’ or ‘port’

The scope of the protection conferred by Regulation No 491/2009 itself

The scope of the protection conferred by Article 53(1)(c), read in conjunction with Article 8(4), and by Article 53(2) of Regulation No 207/2009

The fourth plea, regarding infringement of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof

Summary of the arguments of the parties

The relevant public

The first part, alleging that the Board of Appeal failed to apply Portuguese law

The second part, regarding infringement of Article 118m(2) of Regulation No 491/2009

The fifth plea, regarding infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(g) thereof

The sixth plea, regarding infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) thereof

Summary of the arguments of the parties

Admissibility of the present plea in law

The substance of the present plea in law

Interim conclusion

The claim for alteration

Costs
(
*1
)	Language of the case: English.