Opinion of the Advocate General — ECLI:EU:C:2017:394
Date: 2017-05-18
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded;Appeal - successful
Origin: Portugal

summary, I believe that the two grounds of appeal raised by both EUIPO and the IDVP should succeed, which will lead to the setting aside of the judgment under appeal. 100. In accordance with the first paragraph of Article 61 of the Statute of the Court of Justice, if the decision of the General Court is set aside, the Court of Justice may give final judgment in the matter where the state of the proceedings so permits. To my mind, that is the situation in this appeal. VII. Conclusion 101. On the basis of the foregoing considerations, I propose that the Court: (1) set aside the judgment of the General Court of the European Union of 18 November 2015, Instituto dos Vinhos do Douro e do Porto, IP v OHIM — Bruichladdich Distillery (T‑659/14, not published, EU:T:2015:863); (2) annul the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 July 2014 (Case R 946/2013-4) concerning an application for a declaration of invalidity of the trade mark ‘Port Charlotte’, number 5421474; (3) order each party to pay its own costs. 1 Original language: Spanish. 2 The PDO encompasses the terms Oporto, Porto, Port, Portvin, Port Wine, Portwein, Portwijn, vin de Porto and vinho do Porto. 3 Judgment 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 (‘the judgment under appeal’). 4 Council Regulation of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1). 5 Council Regulation of 22 October 2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation) (OJ 2007 L 299, p. 1), as amended by Council Regulation (EC) No 491/2009 of 25 May 2009 (OJ 2009 L 154, p. 1) (‘Regulation No 1234/2007’). 6 Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, amended on 28 September 1979 (United Nations Treaty Series, vol. 1154, No I 18200, p. 89). 7 Council Regulation 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). In force since 1 August 2009 in relation to the applicable provisions. 8 Judgment of 8 September 2009, C‑478/07, EU:C:2009:521. 9 Council Regulation 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). 10 Judgment of 4 March 1999, Consorzio per la tutela del formaggio Gorgonzola, C‑87/97, EU:C:1999:115. 11 Judgment of 8 September 2009, Budĕjovický Budvar, C‑478/07, EU:C:2009:521. 12 Judgment of 8 May 2014, C‑35/13, EU:C:2014:306. 13 This ground specifically criticises paragraphs 38 and 41 of the judgment under appeal. 14 The IVDP complains specifically about paragraphs 68 to 73 of the judgment under appeal. 15 The IVDP cites the judgments of 4 March 1999, Consorzio per la tutela del formaggio Gorgonzola, C‑87/97, EU:C:1999:115, paragraph 25; of 26 February 2008, Commission v Germany, C‑132/05, EU:C:2008:117, paragraph 44; and of 14 June 2011, Bureau national interprofessionnel du Cognac, C‑4/10 and C‑27/10, EU:C:2011:484, paragraph 56 16 The IVDP refers in this connection to paragraphs 74 to 77 of the judgment under appeal. 17 Judgment of 21 January 2016, C‑75/15, EU:C:2016:35, paragraph 31. 18 Judgment of 21 January 2016, C‑75/15, EU:C:2016:35. 19 The judgment under appeal and the parties’ written observations refer to Regulation No 491/2009 as if it were the applicable provision. In fact, the applicable provision is the version of Regulation No 1234/2007 amended by that regulation. Regulation No 1234/2007 did not originally include provisions other than those on the wine sector, which were not the subject of any legislative amendment. The provisions undergoing amendment were to be included after they had been approved, which occurred with the adoption of Regulation No 479/2008 on the common organisation of the market in wine. Regulation No 491/2009 brings the wine sector completely within the scope of Regulation No 1234/2007 and inserts into that directive the legislative decisions adopted in Regulation No 479/2008. 20 At the hearing, in response to questions from the Court, the IVDP’s representative explained that the higher level of protection under national law consisted of prohibiting a trade mark from taking unfair advantage of the prestige of the PDO Porto/Port. 21 Paragraph 60 of the application to the General Court, lodged on 15 September 2014. 22 Paragraph 62 of the cross-appeal. 23 Paragraph 90 of the response to EUIPO’s appeal. 24 It should also be observed that the reasons why the EU legislature established the organisation of the market in wine are set out in the recitals of Regulation No 479/2008, predecessor of Regulation No 491/2009, which are, therefore, a tool for interpreting the scope of the provisions. 25 Judgment of 8 September 2009, C‑478/07, EU:C:2009:521. 26 The terms of that dispute were so similar to those of the present dispute that, eight years later, the words of Advocate General Ruiz-Jarabo Colomer at point 89 of his Opinion in Budĕjovický Budvar (C‑478/07, EU:C:2009:52) are still applicable: ‘The Court of Justice is asked, in short, to decide whether the Community provisions for the protection of geographical indications and designations of origin are exclusive, one of the most contentious issues in the present field, which the case-law has, to date, answered only in part.’ 27 Judgment of 8 September 2009, Budĕjovický Budvar, C‑478/07, EU:C:2009:521, paragraph 114. 28 Judgment under appeal, paragraph 41. 29 Ibid., paragraphs 44 to 49. 30 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). 31 There is an intention to extend that same unifying tendency to other sectors. For example, the European Parliament adopted a Resolution of 6 October 2015 on the possible extension of geographical indication protection of the European Union to non-agricultural products (2015/2053(INI)). That resolution points out that ‘the national laws currently protecting non-agricultural products give rise to different degrees of protection in Member States, which is not in conformity with the aims of the internal market, and is causing difficulties for their effective protection in Europe and in Member States where they are not covered by national legislation, thus pointing up the need for a single system for the protection of geographical indications throughout the EU’ (no italics in the original). See the resolution, which urges the Commission to draft a legislative proposal in that connection without delay, at http://www.europarl.europa.eu/sides/getDoc.do?pubRef=-//EP//NONSGML+TA+P8-TA-2015-0331+0+DOC+PDF+V0//EN. 32 Judgment of 8 September 2009, Budĕjovický Budvar, C‑478/07, EU:C:2009:521, paragraphs 116 and 117. That same intention of guaranteeing uniform protection in the European Union of geographical indications which comply with the regulation (at that time Council Regulation (EEC) No 2081/92 of 14 July 1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (OJ 1992 L 208, p. 1)), subject to their registration in accordance with the regulation, underlies the judgment of 9 June 1998, Chiciak and Fol, C‑129/97 and C‑130/97, EU:C:1998:274, paragraph 25. In the same vein, see the judgment of 4 March 1999, Consorzio per la tutela del formaggioGorgonzola, C‑87/97, EU:C:1999:115, paragraph 18. 33 Recital 29 thereof describes the route for obtaining protection by means of Community registration, with the Commission being responsible for ensuring that applications satisfy the conditions laid down in the regulation and that the approach is uniform across the Member States. 34 The judgment of 8 September 2009, Budĕjovický Budvar, C‑478/07, EU:C:2009:521, paragraphs 118 to 120, and the judgment of 9 June 1998, Chiciak and Fol, C‑129/97 and C‑130/97, EU:C:1998:274, paragraph 28, assessed that factor as an indication that the Member States had lost their systems of protection. 35 See the list at http://ec.europa.eu/agriculture/markets/wine/e-bacchus/index.cfm. 36 Under that provision, the Commission could, if the relevant information was not presented within the time limit, remove PDOs from the E-Bacchus list. The Commission could also decide, until 31 December 2014, to cancel the protection of PDOs which did not fulfil the conditions laid down in Article 118b of Regulation No 1234/2007. 37 Judgment of 8 September 2009, C‑478/07, EU:C:2009:521. 38 Ibid. 39 The acceptance of higher national quality levels, above those set in the regulations, is also reflected, with regard to spirit drinks, in Article 6 of Regulation No 110/2008. 40 In that connection, paragraph 38 of the judgment under appeal states: ‘in accordance with the spirit and system of the single regulatory framework of the common agricultural policy (recital 1 of 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, … 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.’ 41 See, for example, the recent judgment of 2 March 2017, Panrico v EUIPO, C‑655/15 P, not published, EU:C:2017:155, paragraph 68, which cites the order of 16 May 2013, Arav v H.Eich and OHIM, C‑379/12 P, not published, EU:C:2013:317, paragraphs 42, 81 and 82; the judgment of 19 March 2015, MEGA Brands International v OHIM, C‑182/14 P, EU:C:2015:187, paragraphs 48 to 51; and the order of 7 April 2016, Harper Hygienics v EUIPO, C‑475/15 P, not published, EU:C:2016:264, paragraphs 35 and 36. 42 Judgment of 21 January 2016, C‑75/15, EU:C:2016:35. 43 EUIPO and Bruichladdich both argued as much, using different words, at the hearing. EUIPO, in particular, stated that ‘Porto and Port are generic terms’, although it later qualified its earlier assertion by claiming that ‘they have a certain generic connotation’ [free translation]. 44 Paragraph 72 of the judgment under appeal. 45 The IVDP submitted (point 83 of its application for annulment) that EUIPO agreed that the PDO Porto/Port had a reputation in earlier decisions, which it cited in its application. That point does not, in fact, appear to have been disputed, given the renown and international recognition of wines covered by the PDO. 46 The desire to prohibit the use without due cause of PDOs for wines on the grounds of their hypothetical generic character dates back many years. Article 4 of the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, of 14 April 1891, stated that ‘the courts of each country shall decide what appellations, on account of their generic character, do not fall within the provisions of this Agreement, regional appellations concerning the source of products of the vine being, however, excluded from the reservation specified by this Article’ (emphasis added). 47 Paragraph 71 of the judgment under appeal. 48 Paragraphs 74 to 77 of the judgment under appeal. 49 Judgments of 4 March 1999, Consorzio per la tutela del formaggio Gorgonzola, C‑87/97, EU:C:1999:115, paragraph 25; of 26 February 2008, Commission v Germany, C‑132/05, EU:C:2008:117, paragraph 44; of 14 July 2011, Bureau National Interprofessionnel du Cognac, C‑4/10 and C‑27/10, EU:C:2011:484, paragraph 56; and of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 21. 50 That case-law has sometimes been criticised for requiring the ‘incorporation of part of a protected designation’ because it could be the case that, even if a mark does not incorporate part of a protected designation, it might contain elements which themselves evoke the PDO in the perception of the public. 51 Judgments of 4 March 1999, Consorzio per la tutela del formaggio Gorgonzola, C‑87/97, EU:C:1999:115, paragraph 26; of 26 February 2008, Commission v Germany, C‑132/05, EU:C:2008:117, paragraph 45; and of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 45. 52 Paragraph 74 of the judgment under appeal. 53 Ibid., paragraph 75. 54 Judgment of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 52. 55 EUIPO recognised that likelihood of confusion in other, similar, previous cases which the IVDP referred to before the General Court (point 71 of its application). In particular, in its decision of 14 May 2014, EUIPO allowed the opposition filed by the IVDP against registration of EU trade mark No 11229317, ‘Port Ruighe’, for whisky, after arguing that there was a likelihood of confusion between that mark and the PDO Porto/Port in view of their visual, aural and conceptual similarity, since they referred to alcoholic beverages which are marketed through the same distribution networks. In adopting that decision, EUIPO refused to accept, inter alia, the trade mark proprietor’s claim drawing attention to the weak distinctive character of the PDO. It accepted, moreover, that some consumers might ‘assume that the contested sign [Port Ruighe] is a sub-denomination, for export reasons, of the appellations of origin [Port]’. 56 Judgment of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 45. 57 Criterion used in the judgments of 4 March 1999, Consorzio per la tutela del formaggio Gorgonzola, C‑87/97, EU:C:1999:115, paragraph 27; of 26 February 2008, Commission v Germany, C‑132/05, EU:C:2008:117, paragraph 27; of 14 July 2011, Bureau National Interprofessionnel du Cognac, C‑4/10 and C‑27/10, EU:C:2011:484, paragraph 57; and of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 33.