JUDGMENT OF THE GENERAL COURT (Eighth Chamber, Extended Composition)
25 June 2025 (*)
( EU trade mark – Opposition proceedings – Application for the EU word mark NERO CHAMPAGNE – Earlier PDO ‘Champagne’ – Relative ground for refusal – Article 8(6) of Regulation (EU) 2017/1001 – Article 103(2)(a) and (c) of Regulation (EU) No 1308/2013 – Trade mark that contains a PDO – Products complying with the product specification of the PDO – Obligation to state reasons – Article 94 of Regulation 2017/1001 )
In Case T‑239/23,
Comité interprofessionnel du vin de Champagne, established in Épernay (France),
Institut national de l’origine et de la qualité (INAO), established in Montreuil (France),
represented by E. Varese, G. Righini and V. Mazza, lawyers,
applicants,
supported by
French Republic, represented by E. Timmermans and B. Travard, acting as Agents,
by
Italian Republic, represented by S. Fiorentino, acting as Agent, and by G. Caselli, avvocato dello Stato,
and by
oriGIn, organization for an International Geographical Indication network, established in Geneva (Switzerland), represented by O. Vrins and N. Clarembeaux, lawyers,
interveners,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Nero Lifestyle Srl, established in Milan (Italy), represented by E. Cammareri and B. Marone, lawyers,
THE GENERAL COURT (Eighth Chamber, Extended Composition),
composed of A. Kornezov, President, G. De Baere, D. Petrlík, K. Kecsmár (Rapporteur) and S. Kingston, Judges,
Registrar: R. Ukelyte, Administrator,
having regard to the written part of the procedure,
further to the hearing on 18 September 2024,
gives the following
Judgment
1        By their action under Article 263 TFEU, the applicants, the Comité interprofessionnel du vin de Champagne and the Institut national de l’origine et de la qualité (INAO), seek the partial annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 February 2023 (Case R 531/2022-2) (‘the contested decision’).
Background to the dispute
2        On 19 February 2019, Nero Lifestyle Srl, filed with EUIPO an application for registration of the word sign NERO CHAMPAGNE as an EU trade mark.
3        The trade mark applied for covered goods and services in Classes 33, 35 and 41 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 corresponding, for each of those classes, to the following description:
–        Class 33: ‘Wine complying with the specifications of the protected designation of origin “Champagne”’;
–        Class 35: ‘Advertising; business management; business administration; office functions; sale, retailing and wholesaling, online sale and sale in shops of wine bearing the protected designation of origin “Champagne”, beer and non-alcoholic beverages’;
–        Class 41: ‘Education, providing of training, entertainment, cultural activities; publication of texts (other than publicity texts), illustrations and periodicals, including electronic and digital publications, publication of CD-ROMs, books, journals, trade journals, newspapers, magazines and publications of all kinds (other than for publicity purposes) and in all forms, including electronic and digital publications; providing electronic publications online (not downloadable); videotape production; arranging of colloquiums, seminars, workshops, conferences, congresses and training courses for cultural or educational purposes, organisation of professional or public exhibitions and shows for cultural or educational purposes; publication of books; electronic desktop publishing; party planning; organising of training programmes; arranging of competitions and games (education or entertainment); public presentation of visual and literary works of art for cultural or educational purposes; wine-tasting events for educational purposes; teaching and providing of training relating to commerce, industry and information technology; arranging and conducting of colloquiums, congresses, conferences, seminars and training workshops for commercial and/or advertising purposes; all the aforesaid services being intended to present and promote wine bearing the protected designation of origin “Champagne”’.
4        On 2 August 2019, the applicants filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
5        The opposition was based on Protected Designation of Origin (‘PDO’) No AOP-FR-A1359 ‘Champagne’, registered in the European Union for wine since 18 September 1973, under Article 107(1) of Regulation (EU) No 1308/2013 of the European Parliament and of the Council of 17 December 2013 establishing a common organisation of the markets in agricultural products and repealing Council Regulations (EEC) No 922/72, (EEC) No 234/79, (EC) No 1037/2001 and (EC) No 1234/2007 (OJ 2013 L 347, p. 671).
6        The grounds relied on in support of the opposition were those set out in Article 8(6) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1) and in Article 103(2)(a) to (d) of Regulation No 1308/2013.
7        On 1 February 2022, the Opposition Division partially upheld the opposition in respect of the ‘sale, retailing and wholesaling, online sale and sale in shops of beer and non-alcoholic beverages’ services included in Class 35 on the basis of Article 103(2)(c) and (d) of Regulation No 1308/2013 and rejected the opposition in respect of the other goods and services referred to in paragraph 3 above.
8        On 31 March 2022, the applicants filed a notice of appeal with EUIPO against the Opposition Division’s decision in so far as it had rejected the opposition.
9        By the contested decision, the Board of Appeal annulled the Opposition Division’s decision in so far as it had rejected the opposition in respect of the ‘advertising; business management; business administration; office functions’ services in Class 35 and upheld the opposition in respect of those services. However, it rejected the opposition in respect of the goods in Class 33 and the services in Class 41 referred to in paragraph 3 above, as well as the ‘sale, retailing and wholesaling, online sale and sale in shops of wine bearing the protected designation of origin “Champagne”’ services in Class 35 (together, ‘the goods and services at issue’).
Forms of order sought
10      The applicants, supported by the French Republic and the Italian Republic, claim that the Court should:
–        annul the contested decision in so far as it rejected the opposition;
–        reject the application for registration of the mark applied for in respect of the goods and services at issue or, in the alternative, refer the case back to another Board of Appeal for reconsideration;
–        order EUIPO and Nero Lifestyle to bear their own costs and to pay those incurred by the applicants in the proceedings before the Opposition Division, the Board of Appeal and the General Court.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicants to pay the costs in the event that a hearing is convened.
12      Nero Lifestyle contends that the Court should:
–        dismiss the action;
–        order the applicants to pay the costs.
13      oriGIn, organization for an International Geographical Indication network (‘oriGIn’), supports the applicants’ claims and contends that the Court should order EUIPO and Nero Lifestyle to pay the costs, including those incurred by oriGIn.
Law
The claim for annulment
14      The applicants rely, in essence, on four pleas in law, alleging (i) – the first plea being divided into three parts – infringement of Article 8(6) of Regulation 2017/1001, read in conjunction with Article 103(2)(a)(ii) of Regulation No 1308/2013; (ii) infringement of Article 8(6) of Regulation 2017/1001, read in conjunction with Article 103(2)(a)(i) of Regulation No 1308/2013; (iii) – the third plea being divided into two parts – a breach of the obligation to state reasons set out in Articles 263 and 296 TFEU and in Article 94(1) of Regulation 2017/1001; and (iv) a breach of the principles of equal treatment and of good administration.
15      It is appropriate to examine, first of all, the first plea in law and the first part of the third plea in law together, and then the second part of the third plea in law.
The first plea in law, alleging infringement of Article 8(6) of Regulation 2017/1001, read in conjunction with Article 103(2)(a)(ii) of Regulation No 1308/2013 and the first part of the third plea in law, alleging a breach of the obligation to state reasons
16      By the first part of the first plea in law, the applicants maintain that the use and registration of the PDO ‘Champagne’ as a part of the mark applied for would divert the function of the PDO and would, as such, be contrary to Article 103(2)(a)(ii) of Regulation No 1308/2013, read in conjunction with Article 8(6) of Regulation 2017/1001.
17      In the second part of the first plea in law, the applicants submit that the Board of Appeal incorrectly found that, since the application for registration of the mark applied for related exclusively to products complying with the product specification of the PDO ‘Champagne’ and to services connected with such products, Article 103(2) of Regulation No 1308/2013 did not apply. Thus, the Board of Appeal incorrectly ruled out the possibility that a mark registered in respect of products complying with that specification or services relating to such products could exploit the reputation of the PDO at issue, within the meaning of Article 103(2)(a)(ii) of Regulation No 1308/2013.
18      By the third part of the first plea in law, the applicants complain that the Board of Appeal did not carry out a global assessment of the mark applied for, in infringement of Article 8(6) of Regulation 2017/1001, read in conjunction with Article 103(2)(a)(ii) of Regulation No 1308/2013, and put forward a body of evidence demonstrating, in their view, that the mark applied for exploits the reputation of the PDO ‘Champagne’, within the meaning of that provision.
19      Furthermore, the applicants submit, by the first part of the third plea in law, in essence, that the Board of Appeal failed to fulfil its obligation to provide reasons in that, in paragraph 37 of the contested decision, it did not set out the reasons why it found that there was no evidence that the use of the mark applied for fell within the scope of Article 103(2) of Regulation No 1308/2013.
20      As a preliminary point, it should be borne in mind that, under Article 8(6) of Regulation 2017/1001, upon opposition by any person authorised under the relevant law to exercise the rights arising from a designation of origin or a geographical indication, the trade mark applied for is not to be registered where and to the extent that, pursuant to the EU legislation or national law providing for the protection of designations of origin or geographical indications, first, an application for a designation of origin or a geographical indication had already been submitted, in accordance with EU legislation or national law, prior to the date of application for registration of the EU trade mark or the date of the priority claimed for the application, subject to its subsequent registration, and secondly, that designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark.
21      Article 8(6) of Regulation 2017/1001 must be read in the light of the relevant provisions of EU law concerning the determination and protection of PDOs as regards wine products. Consequently, in the present case, reference should be made to the PDOs registered under Regulation No 1308/2013 (see, by analogy, judgment of 6 October 2021, Esteves Lopes Granja v EUIPO – IVDP (PORTWO GIN), T‑417/20, not published, EU:T:2021:663, paragraph 24).
22      Article 102(1) of Regulation No 1308/2013, entitled ‘Relationship with trade marks’, provides as follows:
‘The registration of a trade mark that contains or consists of a [PDO] or a [protected] geographical indication [PGI] which does not comply with the product specification concerned or the use of which falls under Article 103(2), and that relates to a product falling under one of the categories listed in Part II of Annex VII shall be:
(a)      refused …; or
(b)      invalidated.’
23      Article 103 of Regulation No 1308/2013, entitled ‘Protection’, in its wording in force at the date of the opposition, states as follows:
‘1.      A [PDO] and a [PGI] may be used by any operator marketing a wine which has been produced in conformity with the corresponding product specification.
2.      A [PDO] and a [PGI], as well as the wine using that protected name in conformity with the product specifications, shall be protected against:
(a)      any direct or indirect commercial use of that protected name:
(i)      by comparable products not complying with the product specification of the protected name; or
(ii)      in so far as such use exploits the reputation of a designation of origin or a geographical indication;
…
(c)      any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the wine product concerned, as well as the packing of the product in a container liable to convey a false impression as to its origin;
…’
24      It follows from the case-law that the system of protection of PDOs and PGIs provided for by Regulation No 1308/2013 is essentially intended to assure consumers that agricultural products bearing a registered designation have, because of their provenance from a particular geographical area, certain specific characteristics and, accordingly, offer a guarantee of quality due to their geographical provenance, with the aim of enabling agricultural operators to secure higher incomes in return for a genuine effort to improve quality, and of preventing improper use of those designations by third parties seeking to profit from the reputation which those products have acquired by their quality (judgments of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto, C‑56/16 P, EU:C:2017:693, paragraph 82, and of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 49).
25      The applicants’ arguments must be examined in the light of those considerations.
–       The first part of the first plea in law
26      The applicants, supported by the Italian Republic, argue that the right to use a PDO referred to in Article 103(1) of Regulation No 1308/2013 concerns the right to use it as a PDO, that is to say in accordance with the function of a PDO. By contrast, that provision does not allow third parties to register a PDO as part of a trade mark, since such use would be contrary to Article 103(2)(a)(ii) of Regulation No 1308/2013. At the hearing, the applicants, supported by the French Republic and oriGIn, qualified their position by admitting, first, that, subject to certain conditions, a PDO may form part of a trade mark, while maintaining, secondly, that the Board of Appeal must carry out a case-by-case analysis in order to assess whether the mark applied for exploits the reputation of the PDO in question within the meaning of Article 103(2)(a)(ii) of that regulation.
27      EUIPO and Nero Lifestyle dispute the applicants’ arguments. In particular, at the hearing, EUIPO argued that the applicants’ argument that the Board of Appeal should have carried out a case-by-case analysis in order to assess whether the mark applied for exploited the reputation of the PDO ‘Champagne’ was inadmissible in so far as it was raised for the first time at that hearing.
28      It follows from the combined provisions of Article 76(d) and Article 84(1) of the Rules of Procedure of the General Court, in particular, that the submission of new pleas in law or arguments in the course of the proceedings is prohibited unless those pleas or arguments are based on matters of law or of fact which come to light in the course of the procedure or amplify a plea put forward previously, whether directly or by implication, in the original application, and which are closely connected therewith (see judgment of 22 November 2017, von Blumenthal and Others v EIB, T‑558/16, not published, EU:T:2017:827, paragraph 48 and the case-law cited).
29      In that regard, the applicants’ argument that the Board of Appeal should have carried out, pursuant to Article 103(2)(a)(ii) of Regulation No 1308/2013, a case-by-case analysis in order to assess whether the mark applied for exploited the reputation of the PDO ‘Champagne’ is intended only to clarify the argument – put forward in the application and developed in the context of the third part of the first plea in law – that the Board of Appeal should have applied that provision in cases where the mark contained a PDO and covered products complying with the product specification of that PDO and services referring to such products, and is thus admissible.
30      As to the substance, as regards the question whether the registration of a trade mark that contains or consists of a PDO is, as such, contrary to Articles 102 and 103 of Regulation No 1308/2013, it should be borne in mind that Article 102(1) of Regulation No 1308/2013 provides that the registration of a trade mark that contains or consists of a PDO or a PGI which does not comply with the product specification concerned or the use of which falls under Article 103(2) of that regulation, and that relates to a product falling under one of the categories listed in Part II of Annex VII thereto, is either to be refused if the application for registration of the trade mark is submitted after the date of submission of the application for protection of the designation of origin or geographical indication to the Commission and the designation of origin or geographical indication is subsequently protected, or to be invalidated.
31      It follows from that provision that it does not prohibit, as a matter of principle, a trade mark from containing or consisting of a PDO. On the contrary, it follows from that provision that a mark which contains or consists of a PDO may be registered subject to certain conditions, since registration of such a mark is to be refused or invalidated only in two situations, namely, first, if the PDO does not comply with the product specification concerned or, secondly, if its use falls under Article 103(2) of Regulation No 1308/2013 and relates to a product falling under one of the categories listed in Part II of Annex VII to that regulation.
32      Article 103(2) of Regulation No 1308/2013 provides, in essence, an exhaustive list of practices against which PDOs are protected.
33      In particular, Article 103(2)(a)(ii) of Regulation No 1308/2013, to which the applicants refer in the first part of the first plea in law to argue that the use and registration of a trade mark that contains or consists of a PDO would be ‘as such’ incompatible with that provision, merely provides that a PDO is to be protected against any direct or indirect commercial use thereof ‘in so far as such use exploits the reputation of [the PDO]’. It follows that that provision, read in conjunction with Article 102(1) of that regulation, does not preclude registration of a trade mark that contains or consists of a PDO as such, but only precludes such registration from exploiting the reputation of the PDO at issue.
34      Thus, it is apparent from a joint reading of Article 102(1) and Article 103(2) of Regulation No 1308/2013 that those provisions do not preclude registration of a trade mark that contains or consists of a PDO as such, except where such registration falls within the scope of one of the situations expressly laid down in that respect.
35      Moreover, as noted in paragraph 26 above, when questioned at the hearing, the applicants, in essence, admitted that Article 102(1) of Regulation No 1308/2013 does not prohibit the registration of trade marks that contain or consist of a PDO as such, but that it requires a case-by-case analysis in order to ascertain whether the conditions permitting such registration have been met, which the Board of Appeal allegedly failed to do in the present case.
36      Accordingly, the first part of the first plea in law must be rejected as unfounded.
–       The second and the third parts of the first plea in law and the first part of the third plea in law
37      In the present case, in paragraph 37 of the contested decision, the Board of Appeal found, in essence, first, that Article 103(2) of Regulation No 1308/2013 did not apply because, in accordance with the limitation of the list of goods and services, the PDO was used in accordance with the product specification and, secondly, there was no evidence that the use of the mark applied for fell within the scope of Article 103(2) of that regulation.
38      In that regard, in paragraphs 38 to 41 of the contested decision, the Board of Appeal found, in essence, by reasoning a contrario
in respect of Article 102(1)(a) of Regulation No 1308/2013, that, if use of the PDO at issue was made in relation to products that were in conformity with the relevant specification of the PDO ‘Champagne’, Article 103(2) of Regulation No 1308/2013 did not apply, and that was the case here since the list of goods and services at issue was limited to products complying with that specification.
39      The applicants, supported by the French Republic and oriGIn, argue that it is incorrect to infer from Article 102(1) of Regulation No 1308/2013 – the scope of which is limited to trade marks that contain or consist of a PDO which does not comply with the product specification concerned – that the scope of Article 103(2)(a)(ii) of that regulation is also limited to use of that PDO in respect of products which do not comply with the specification. Therefore, the mere fact that the mark applied for covers products complying with the specification of the ‘Champagne’ PDO and related services is not sufficient, in the absence of a case-by-case analysis, to exclude the applicability of Article 103(2)(a)(ii) of that regulation in the present case.
40      EUIPO and Nero Lifestyle dispute the applicants’ arguments.
41      According to EUIPO, in the examination of absolute grounds for refusal of trade marks that contain or consist of a PDO, what the applicants call the ‘limitation theory’ has been applied for many years. According to that theory, the objections raised under Article 7(1)(j) of Regulation 2017/1001, read in conjunction with Article 103 of Regulation No 1308/2013, may be waived if the relevant goods are restricted to comply with the specifications of the PDO or the PGI at issue. Furthermore, it necessarily follows from the structure of Article 103(2)(a) of Regulation No 1308/2013 that the concept of ‘exploit[ing] the reputation’ of a PDO set out in Article 103(2)(a)(ii) of that regulation is limited, in the first place, or even exclusively, to situations in which the PDO is used for goods or services which are not comparable to those covered by the PDO in question. This also follows from the judgment of 6 October 2021, PORTWO GIN (T‑417/20, not published, EU:T:2021:663, paragraph 52), according to which the reputation of a PDO is likely to be exploited when it is used for goods other than those protected by the PDO and when the particular image and distinctive qualities of a PDO are transferable to the goods covered by the mark applied for.
42      Nero Lifestyle supports the interpretation of Article 103(2)(a) of Regulation No 1308/2013 made by EUIPO on the basis of several decisions of EUIPO.
43      First of all, according to the ‘limitation theory’ that the Board of Appeal applied in paragraphs 37 to 41 of the contested decision, it is presumed, in essence, that a mark which includes a PDO cannot, as a matter of principle, exploit the reputation of that PDO when that mark is exclusively registered in respect of products complying with the specification of that PDO and in respect of services referring to such products.
44      That theory originates in EUIPO’s Guidelines for Examination of European Union Trade Marks (Part C (Opposition), Section 6 (Geographical Indications), point 3.1.3 (Limits to the scope of protection of GIs on relative grounds)), according to which ‘where the specification of a [trade mark] application is limited, in relation to goods identical to the product covered by the [PDO or PGI], to goods in conformity with the specification of the relevant [PDO or PGI], the function of the [PDO or PGI] in question is safeguarded in relation to those products. This is because the [trade mark] application only covers products from the particular geographic origin and the special qualities connected therewith. Consequently, an opposition against [a trade mark] application that has been appropriately limited will not succeed.’
45      In that regard, it should be noted that the contested decision lacks clarity in its application of that ‘limitation theory’, as it was applied in the present case. In particular, it is unclear whether, according to the Board of Appeal, the ‘limitation theory’ constitutes, in essence, a rebuttable presumption that the reputation of the PDO was not exploited, as follows from paragraph 37 of the contested decision, or a non-rebuttable one, as follows from paragraphs 40 and 41 of that decision.
46      When questioned at the hearing, EUIPO was unable to clarify whether that theory consisted of a rebuttable or a non-rebuttable presumption and whether, in the contested decision, the Board of Appeal applied the first or the second type of presumption. Thus, while EUIPO maintained that, in principle, a trade mark designating only products complying with the specification of the PDO cannot exploit its reputation, EUIPO nevertheless admitted that it could not be ruled out that, in rare cases, such exploitation could still be demonstrated.
47      In those circumstances, it should be noted that, according to a first reading, arising from paragraphs 40 and 41 of the contested decision, the Board of Appeal applied the ‘limitation theory’ as a non-rebuttable presumption that the reputation of a PDO was not exploited, when the mark applied for covered only products complying with the specification of the PDO and related services. The Board of Appeal noted, in those paragraphs of the contested decision, that, since the mark applied for covered products that were in conformity with the specification of the PDO and services relating to such products, Article 103(2) of Regulation No 1308/2013 did not apply.
48      By doing so, the Board of Appeal made an error of law. First, as recalled in paragraph 22 above, Article 102(1) of Regulation No 1308/2013 provides, in essence, for two grounds for refusal to register a trade mark that contains or consists of a PDO and that relates to a product which falls under one of the categories listed in Part II of Annex VII to that regulation. A trade mark that contains or consists of a PDO may not be registered, first, if it does not comply with the product specification concerned or, secondly, if its use falls within the scope of Article 103(2) of that regulation.
49      Secondly, the situations listed in Article 103(2) of Regulation No 1308/2013, recalled in paragraph 23 above, do not cover – with the exception of that provided for in Article 103(2)(a)(i) of that regulation – comparable products which do not comply with the specification. Indeed, nothing in the wording of Article 103(2)(a)(ii) and (b) to (d) of Regulation No 1308/2013 indicates that the situations provided for therein cannot apply to the use of a PDO in respect of products complying with the specification of that PDO.
50      Unlike Article 103(2)(a)(i) of Regulation No 1308/2013, which limits its scope to ‘comparable products not complying with the product specification’, Article 103(2)(a)(ii) of that regulation does not contain any indication that it applies only to use of the PDO at issue for comparable products or for goods and services not complying with the specification of that PDO (see, to that effect and by analogy, judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 54). It is apparent from the wording of Article 103(2)(a)(ii) of Regulation No 1308/2013, which does not refer to ‘comparable products’ or to any other specific category of goods or services, that that provision is intended to apply to all types of goods and services, including comparable products complying with the specification of the PDO in question.
51      It follows that the mere fact that a mark containing a PDO limits its registration to products complying with the specification and to services relating to such products does not in itself preclude the application of the grounds for refusal or cancellation provided for in Article 103(2)(a)(ii) and (b) to (d) of Regulation No 1308/2013. Thus, it cannot be ruled out ab initio that the mark applied for may exploit the reputation of the PDO within the meaning of Article 103(2)(a)(ii) of Regulation No 1308/2013, when the goods or services to which it relates comply with the specification. Accordingly, and contrary to what the Board of Appeal found in paragraphs 40 and 41 of the contested decision, Article 103(2)(a)(ii) of Regulation No 1308/2013 may be relied on in order to oppose registration of a mark that contains or consists of a PDO, despite the fact that the products and services relating to such products, covered by the mark applied for, are in conformity with the specification of the PDO in question.
52      In that regard, and as the applicants correctly argue, in the light of Article 103(2)(a)(ii) of Regulation No 1308/2013, the Board of Appeal should have, taking into account all the relevant circumstances in the present case, carried out an analysis in order to assess whether the mark applied for exploited the reputation of the PDO ‘Champagne’. In that regard, it follows from the case-law that exploitation of the reputation of a PDO, within the meaning of Article 103(2)(a)(ii) of Regulation No 1308/2013, entails use of the PDO that seeks to take undue advantage of the reputation enjoyed by the PDO (judgments of 20 December 2017, Comité Interprofessionnel du Vin de Champagne, C‑393/16, EU:C:2017:991, paragraph 40, and of 6 October 2021, PORTWO GIN, T‑417/20, not published, EU:T:2021:663, paragraph 50).
53      Furthermore, as the applicants correctly note, the Board of Appeal contradicted itself in the contested decision by finding, in paragraph 40 of the contested decision, that ‘Article 103(2) of Regulation No 1308/2013 d[id] not apply’ to a mark covering only products complying with the specification, on the one hand, while then examining, in paragraph 47 et seq. of the contested decision, whether the registration of that same mark contravened Article 103(2)(c) of that regulation, on the other. The Board of Appeal thus appears to have admitted, implicitly but necessarily, that some of the situations provided for in Article 103(2) of Regulation No 1308/2013 may apply to such a mark and thus prevent its registration, which contradicts the existence of a non-rebuttable presumption that Article 103(2) of Regulation No 1308/2013 is not applicable to marks that contain or consist of a PDO exclusively covering products complying with the specification and related services.
54      Therefore, the Board of Appeal, by introducing, in essence, in paragraphs 40 and 41 of the contested decision, a non-rebuttable presumption that the registration of a mark that contains or consists of a PDO in respect of products complying with the specification and services relating to such products is deemed not to exploit the reputation of that PDO within the meaning of Article 103(2)(a)(ii) of Regulation No 1308/2013, made an error of law in the interpretation of that provision.
55      According to a second reading of the contested decision, distinct from that set out in paragraph 47 above and arising from paragraph 37 of that decision, the ‘limitation theory’ would introduce a rebuttable presumption, according to which it can be presumed that a trade mark registered solely for products complying with the specification and services relating to those goods does not exploit the reputation of a PDO, unless shown otherwise.
56      As recalled in paragraph 37 above, the Board of Appeal stated, in paragraph 37 of the contested decision, that Article 103(2) of Regulation No 1308/2013 did not apply in the present case because the PDO was used in accordance with the product specification and there was no evidence that the use of the mark applied for fell within the scope of Article 103(2) of that regulation. In doing so, the Board of Appeal appeared to have accepted that that presumption may be overturned on the basis of elements capable of demonstrating, in the present case, that the use of the mark was likely to exploit the reputation of the PDO.
57      In that regard, it should be recalled, as noted in paragraph 24 above, that the system of protection of PDOs and PGIs provided for by Regulation No 1308/2013 is essentially intended to assure consumers that agricultural products bearing a registered name have, because of their provenance from a particular geographical area, certain specific characteristics and, accordingly, offer a guarantee of quality due to their geographical provenance.
58      Thus, it can be presumed that a trade mark that contains or consists of a PDO, registered solely in respect of products complying with the specification of that PDO or for related services, will not unduly exploit the reputation of that PDO, within the meaning of Article 103(2)(a)(ii) of Regulation No 1308/2013, since it will only be deemed to be used, on the market, in respect of products complying with the quality standards relating to that PDO or in respect of services relating to such products. Therefore, the objective of protecting the quality of goods covered by a PDO pursued by Regulation No 1308/2013 is presumed to be fulfilled in that situation.
59      However, such a presumption may be overturned when it can be demonstrated, on the basis of concrete, substantiated and consistent elements, that a given trade mark is likely unduly to exploit the reputation of a PDO, even if it only covers products complying with the specification of that PDO or related services. Thus, when such elements are brought to the attention of the adjudicating bodies of EUIPO, those bodies must examine them in order to ascertain whether they allow that presumption to be rebutted.
60      Accordingly, to the extent that the contested decision is interpreted as introducing a rebuttable presumption, it is not tainted by an error of law. However, as correctly noted by the applicants, it is appropriate to examine whether the Board of Appeal set out, to a sufficient legal standard, the reasons that led it to conclude that that presumption had not been rebutted in the present case.
61      In that regard, it should be borne in mind that the first sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based. That obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard, not only to its wording, but also to its context and to all the legal rules governing the matter in question (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 65 and the case-law cited).
62      Furthermore, the Board of Appeal is not required to respond expressly and exhaustively to all the arguments put forward by the parties to the proceedings before it (see, to that effect, judgments of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 112, and of 6 September 2012, Storck v OHIM, C‑96/11 P, not published, EU:C:2012:537, paragraph 88), provided, however, that it sets out the facts and the legal considerations having decisive importance in the context of the decision (see judgment of 24 November 2015, Intervog v OHIM (meet me), T‑190/15, not published, EU:T:2015:874, paragraph 48 and the case-law cited).
63      In that regard, the Board of Appeal found, in paragraph 37 of the contested decision, that the applicants had not produced any evidence to that end.
64      However, it is apparent from the applicants’ written submissions that various elements, indicating that the trade mark applied for was likely to exploit the reputation of the PDO ‘Champagne’, were raised at the stage of the administrative procedure. Those elements include (i) the outstanding reputation of the PDO ‘Champagne’; (ii) the argument that a service cannot, by definition, comply with the product specification of a PDO, with the result that the ‘limitation theory’ cannot apply to services; (iii) the reference to the fact that the mark applied for is a word mark, which can therefore be used in many different ways on the market, including in a manner contrary to the objectives of the PDO; (iv) the arguments claiming, in essence, that the term ‘nero’ qualified the word ‘champagne’ within the mark applied for; and (v) the arguments relating to the labelling of the goods marketed by Nero Lifestyle. Lastly, the applicants had referred, in their written pleadings before the Board of Appeal, to the evidence already produced before the Opposition Division and listed in paragraph 6 of the contested decision.
65      The Board of Appeal examined, in paragraphs 42 to 46 of the contested decision, only one of those elements, namely that according to which the mark applied for contravened the labelling rules provided for in the specification of the PDO ‘Champagne’.
66      Thus, regardless of the merits of the arguments and elements raised by the applicants and listed in paragraph 64 above, by merely stating that ‘there is no evidence that use of the mark [applied for] falls under Article 103(2)’, the Board of Appeal was in breach of its obligation to state reasons in the light of the case-law referred to in paragraphs 61 and 62 above, in that it did not sufficiently explain how the elements produced by the applicants were not capable of overturning, in the present case, the presumption set out in paragraph 58 above.
67      None of the foregoing considerations is called into question by the arguments of EUIPO and Nero Lifestyle. First, it is not apparent from the judgment of 6 October 2021, PORTWO GIN (T‑417/20, not published, EU:T:2021:663, paragraph 31), relied on by EUIPO, that, by stating that Article 103(2)(a) of Regulation No 1308/2013 grants protection against any direct or indirect commercial use of a PDO ‘both as regards comparable products which do not comply with the product specifications of the protected name and as regards products which are not comparable, in so far as that use exploits the reputation of that PDO’, the Court interpreted Article 103(2)(a)(ii) of Regulation No 1308/2013 as meaning that it applies only to products not comparable to those covered by a given PDO. The question of whether that latter provision is applicable to the use of that PDO in respect of comparable products complying with the specification did not arise in that case. Thus, the Court interpreted Article 103(2)(a) of Regulation No 1308/2013 in the light of the factual circumstances of that case, namely the use of a PDO in a mark to designate spirits which did not correspond to the characteristics of the wines covered by that PDO. Furthermore, the Court also found that the scope of the protection provided for in that provision was ‘particularly broad’.
68      Secondly, and contrary to what Nero Lifestyle maintains, the judgment of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto
(C‑56/16 P, EU:C:2017:693, paragraphs 81 to 84), does not undermine the previous findings. While, pursuant to that judgment, PDOs ‘are intended to guarantee that the product bearing them comes from a specified geographical area and displays certain particular characteristics’, that judgment also states that ‘the applicable rules protect those entitled to use them against improper use of those designations by third parties seeking to profit from the reputation which they have acquired’, which the Board of Appeal failed to examine, as is apparent from paragraph 65 above. Thus, the mere fact that the products and services relating to such products comply with the specification is not sufficient ab initio to conclude that a trade mark registered in respect of such products or services is not capable of taking unfair advantage of the reputation of the PDO within the meaning of Article 103(2)(a)(ii) of Regulation No 1308/2013, without having specifically examined the particular characteristics of that mark and all the relevant circumstances of the case.
69      In the light of all of the foregoing reasons, the second and the third parts of the first plea in law and the first part of the third plea in law must be upheld together. Consequently, the contested decision must be annulled in so far as the Board of Appeal dismissed the appeal brought before it by the applicants.
70      However, it remains necessary also to examine the second part of the third plea in law, since that part, unlike the error of law and the failure to state reasons found above, has an impact on how the applicants’ second head of claim, seeking the alteration of the contested decision, is to be answered.
The second part of the third plea in law, alleging infringement of Article 103(2)(c) of Regulation No 1308/2013
71      The applicants, supported by the French Republic and oriGIn, submit that the Board of Appeal incorrectly found that Italian-speaking consumers would not be misled as to the nature and essential qualities of the wine referred to in the list of goods and services covered by the mark applied for, within the meaning of Article 103(2)(c) of Regulation No 1308/2013. In their view, first, the term ‘nero’, which means ‘black’ in English, could be perceived by the relevant public either as an indication of the colour of the wine or as an indication of the grape variety of that wine, indicating for example that that wine is produced from black grapes only, or contains a greater quantity of the ‘pinot noir’ grape variety. Thus, the words ‘nero champagne’ could be understood as meaning ‘black champagne’ and as referring to a new variety of champagne, even though it is clear from the PDO specification that Champagne wine can only be white or rosé. The Board of Appeal did not provide any other convincing explanation as to how the public would perceive the word ‘nero’ associated with the name ‘Champagne’. In that regard, the mere finding that ‘black champagne’ does not exist is not sufficient. On the contrary, it was precisely because such a variety of champagne does not exist that the Board of Appeal should have found that there was a risk that the relevant public might be misled. Lastly, the applicants dispute the Board of Appeal’s finding that the mark applied for could not mislead consumers, on the grounds that it was part of the ‘NERO Lifestyle Project’ and that it belonged to a family of NERO marks owned by Nero Lifestyle.
72      EUIPO and Nero Lifestyle dispute the applicants’ arguments.
73      EUIPO argues that the grounds on which the Board of Appeal rejected the opposition on the basis of Article 103(2)(c) of Regulation No 1308/2013 are clearly set out in paragraph 47 et seq. of the contested decision. Furthermore, the grounds of the contested decision in that regard are correct, since there is no reason why the relevant public would understand the word ‘nero’ as qualifying the word ‘champagne’, in so far as, in Italian, adjectives describing colours are normally placed after the noun they qualify, and not before it. According to EUIPO, the wording ‘black champagne’ is clearly not misleading since it refers to a concept that does not exist. Furthermore, the applicants’ assertion that consumers would understand the word ‘nero’ as a reference to a grape variety was not supported by any evidence. Lastly, as regards the argument relating to the family of marks, according to EUIPO, paragraph 49 of the contested decision must be understood as an additional assessment of how the words ‘nero champagne’ are understood by the Italian public, but the contested decision would remain the same without those additional findings.
74      The Court finds it appropriate to reclassify that second part of the third plea in law, based on its content, as being, in essence, based on an infringement of Article 103(2)(c) of Regulation No 1308/2013.
75      As noted in paragraph 23 above, it follows from Article 103(2)(c) of Regulation No 1308/2013 that a PDO, as well as the wine using that protected name in conformity with the product specifications, are to be protected against any false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the wine product concerned, as well as the packing of the product in a container liable to convey a false impression as to its origin.
76      In the present case, in paragraph 48 of the contested decision, the Board of Appeal stated that the applicants’ submissions were not supported by any evidence. Furthermore, the Board of Appeal stressed that the Italian-speaking part of the relevant public commonly referred to the colour of wines as ‘rosso’ or ‘rossi’ (red wine), ‘bianco’ or ‘bianchi’ (white wine) and ‘rosato’ or ‘rosati’ (rosé wine), finding, in essence, that the relevant public would not be misled since there was no such thing as ‘nero’ or ‘black’ champagne. Lastly, in paragraph 49 of the contested decision, the Board of Appeal found that there was a family of NERO marks owned by Nero Lifestyle, which was ‘another reason’ for understanding that the word ‘nero’ did not refer to the colour of the wine, but to the family of marks owned by Nero Lifestyle.
77      First, it should be noted that the trade mark applied for is composed of a first word element ‘nero’, which is a common adjective in Italian meaning ‘black’, and a second word element ‘champagne’.
78      Secondly, it is apparent from the specification of the PDO ‘Champagne’, referred to by the applicants, that Champagne wines can be white or rosé, with the use of three grape varieties: Pinot Noir, Pinot Meunier and Chardonnay, with no specific rules governing the proportion to be included in the production of Champagne wine. In that regard, the applicants stated at the hearing, without being contradicted by EUIPO, that it was very rare for a champagne to be composed exclusively of Pinot Noir and that, in that case, it was referred to by the words ‘blanc de noirs’ and that such a champagne would actually be white wine obtained from black grapes. Thus, the relevant public might understand the words ‘nero champagne’ as describing champagne made exclusively from pinot noir, which would not necessarily be the case.
79      Thirdly, it follows from the case-law that the restriction of the factual basis of the examination by the Board of Appeal does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (see judgments of 22 June 2004, Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 29, and of 9 April 2014, Pico Food v OHIM – Sobieraj (MILANÓWEK CREAM FUDGE), T‑623/11, EU:T:2014:199, paragraph 19).
80      In that regard, the word ‘nero’ is used in the name of several well-known Italian grape varieties, such as ‘Nero d’Avola’ or ‘Nero Buono’, and is even included in the name of Italian PDOs such as ‘Pinot Nero dell’Oltrepò Pavese’ or ‘Castel del Monte Bombino Nero’. That well-known fact is confirmed by the decision of the Opposition Division, which states that there are multiple grapevine varieties which include the characteristic ‘nero’ in their names, such as ‘Albana nera’, ‘Bombino nero’, ‘Greco nero’, ‘Nero buono’ or ‘Nero d’Avola’.
81      Consequently, the relevant public could be misled into thinking that the mark applied for evokes the grape variety of the champagne at issue, for the reasons set out in paragraph 78 above.
82      Furthermore, as the applicants correctly argue, the word ‘nero’ will be understood by the relevant Italian-speaking public as meaning ‘black’. Therefore, in so far as the mark applied for covers wines complying with the specification of the PDO ‘Champagne’, that public is likely to be misled into thinking that that word refers to the colour of that wine, especially since there are already white champagnes and rosé champagnes on the market. Thus, the relevant public could be misled, as to the colour of the Champagne wine marketed under the mark applied for, into thinking that it is a new variety of champagne, namely a ‘black champagne’, even though, under the specification of the PDO, a champagne can only be white or rosé.
83      Contrary to what EUIPO maintains, the fact that black champagne does not exist does not rule out the possibility that the words ‘black champagne’ could be misleading. Indeed, it is customary for champagne, and more generally wine, to be described by its colour. The relevant public could therefore be misled into thinking that it is a new product on the market.
84      Lastly, it is not apparent from the documents in the file that the NERO family of marks, allegedly held by Nero Lifestyle, is particularly renowned or known to the relevant public, with the result that it has not been demonstrated that, when confronted with the mark applied for, that public would immediately understand that it refers to that family of marks. Furthermore, the Board of Appeal did not explain in any way the reasons allowing it to find that there was such a family of marks, nor indeed which marks that family comprised. Furthermore, even if a part of the relevant public was aware of that alleged family of marks and had established a link between it and the mark applied for, the fact remains that, for another part of the relevant public, which was not aware of it, the word ‘nero’ could be perceived as evoking either the champagne grape variety or its colour, with the result that, for that part of the relevant public, the mark applied for could be perceived as conveying a false or misleading indication within the meaning of Article 103(2)(c) of Regulation No 1308/2013.
85      Accordingly, and for the reasons set out above, the Board of Appeal made an error of assessment in finding that the mark applied for did not fall within the scope of Article 103(2)(c) of Regulation No 1308/2013.
86      Therefore, the second part of the third plea in law must be upheld and, accordingly, the contested decision must be annulled, on that ground also, in so far as the Board of Appeal dismissed the appeal brought before it by the applicants, without there being any need to examine the second and fourth pleas in law.
The claim for alteration
87      By their second head of claim, the applicants ask the Court, primarily, to reject the application for registration of the trade mark applied for in respect of the goods and services at issue.
88      It must be stated that that head of claim seeks, in essence, that the Court exercise its power to alter decisions in order to annul the Opposition Division’s decision and uphold the opposition to registration of the mark applied for in respect of all the goods and services at issue, thus adopting the decision which, according to the applicants, the Board of Appeal should have taken when the appeal was brought before it.
89      It is apparent from the second sentence of Article 71(1) of Regulation 2017/1001 that the Board of Appeal may annul the decision of the EUIPO department which was responsible for the contested decision and exercise any power within the competence of that department, in this instance to rule on the opposition and uphold it. Consequently, those measures fall within those which may be taken by the Court in the exercise of its power to alter decisions, enshrined in Article 72(3) of Regulation 2017/1001 (see judgment of 14 December 2011, Völkl v OHIM – Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 40 and the case-law cited; judgment of 13 December 2018, Monster Energy v EUIPO – Bösel (MONSTER DIP), T‑274/17, EU:T:2018:928, paragraph 97 (not published)).
90      It must be borne in mind that the power of the Court to alter decisions pursuant to Article 72(3) of Regulation 2017/1001 does not have the effect of conferring on that Court the power to carry out an assessment on which the 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 (see judgment of 24 October 2019, ZPC Flis v EUIPO – Aldi Einkauf (Happy Moreno choco), T‑498/18, EU:T:2019:763, paragraph 129 and the case-law cited).
91      In the present case, it should be noted that the Board of Appeal examined, in the contested decision, all the evidence which the applicants had submitted in order to substantiate the claim that a false or misleading indication within the meaning of Article 103(2)(c) of Regulation No 1308/2013 was conveyed by the mark applied for in respect of the goods and services for which registration was sought, with the result that the Court has the power to alter that decision in that regard (see, to that effect, judgment of 5 June 2024, Supermac’s v EUIPO – McDonald’s International Property (BIG MAC), T‑58/23, not published, EU:T:2024:360, paragraph 109).
92      As follows from paragraphs 77, 78, 80, 83 and 84 above, the Board of Appeal was required to find, following a global assessment of the evidence provided by the applicants, that that evidence was sufficient to demonstrate that the word ‘nero’ could be perceived as evoking either the champagne grape variety or its colour, with the result that, for at least a part of the relevant public, the mark applied for could be perceived as conveying a false or misleading indication within the meaning of Article 103(2)(c) of Regulation No 1308/2013.
93      In those circumstances, it is appropriate, by altering the contested decision, to annul the Opposition Division’s decision in so far as it rejected the opposition to registration of the mark applied for and to uphold that opposition in respect of the goods and services at issue.
Costs
94      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
95      Since EUIPO and Nero Lifestyle have been unsuccessful, they must be ordered to pay the costs incurred by the applicants and by oriGIn, in accordance with the form of order sought by the latter.
96      The applicants also applied for the Court to order EUIPO and Nero Lifestyle to pay the costs incurred by them before the Board of Appeal. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. Consequently, EUIPO and Nero Lifestyle must also be ordered to pay the costs necessarily incurred by the applicants for the purposes of the proceedings before the Board of Appeal.
97      The same does not apply, however, to costs incurred for the purposes of the proceedings before the Opposition Division. Accordingly, the applicants’ request that EUIPO and Nero Lifestyle be ordered to pay the costs of the administrative proceedings before EUIPO can be allowed only as regards the costs necessarily incurred by the applicants for the purposes of the proceedings before the Board of Appeal (judgment of 12 January 2006, Devinlec v OHIM – TIME ART (QUANTUM), T‑147/03, EU:T:2006:10, paragraph 115).
98      Lastly, in accordance with Article 138(1) of the Rules of Procedure, the French Republic and the Italian Republic must be ordered to bear their own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber, Extended Composition)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 February 2023 (Case R 531/2022-2) in so far as it dismissed the appeal against the Opposition Division’s decision of 1 February 2022 relating to the EU word mark NERO CHAMPAGNE;
2.      Upholds the opposition in respect of the goods and services in Classes 33, 35 and 41 and corresponding, for each of those classes, to the following description:
–        Class 33: ‘Wine complying with the specifications of the protected designation of origin “Champagne”’;
–        Class 35: ‘Sale, retailing and wholesaling, online sale and sale in shops of wine bearing the protected designation of origin “Champagne”’;
–        Class 41: ‘Education, providing of training, entertainment, cultural activities; publication of texts (other than publicity texts), illustrations and periodicals, including electronic and digital publications, publication of CD-ROMs, books, journals, trade journals, newspapers, magazines and publications of all kinds (other than for publicity purposes) and in all forms, including electronic and digital publications; providing electronic publications online (not downloadable); videotape production; arranging of colloquiums, seminars, workshops, conferences, congresses and training courses for cultural or educational purposes, organisation of professional or public exhibitions and shows for cultural or educational purposes; publication of books; electronic desktop publishing; party planning; organising of training programmes; arranging of competitions and games (education or entertainment); public presentation of visual and literary works of art for cultural or educational purposes; wine-tasting events for educational purposes; teaching and providing of training relating to commerce, industry and information technology; arranging and conducting of colloquiums, congresses, conferences, seminars and training workshops for commercial and/or advertising purposes; all the aforesaid services being intended to present and promote wine bearing the protected designation of origin “Champagne”’;
3.      Orders EUIPO and Nero Lifestyle Srl to pay the costs, including those incurred before the Board of Appeal by the Comité interprofessionnel du vin de Champagne and the Institut national de l’origine et de la qualité (INAO), and those incurred by oriGIn, organization for an International Geographical Indication network;
4.      Orders the French Republic and the Italian Republic to bear their own costs.
Kornezov
De Baere
Petrlík
Kecsmár
Kingston
Delivered in open court in Luxembourg on 25 June 2025.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.