JUDGMENT OF THE GENERAL COURT (Second Chamber)
26 February 2025 (*)
( EU trade mark – Opposition proceedings – Application for the EU word mark PORTSOY – Earlier PDO ‘Port’ – Article 8(6) of Regulation (EU) 2017/1001 – Article 103(2)(a)(i) and (ii) and (b) of Regulation (EU) No 1308/2013 – Concepts of ‘use’ and ‘evocation’ of a PDO )
In Case T‑40/24,
Instituto dos Vinhos do Douro e do Porto, IP (IVDP),
established in Peso da Régua (Portugal), represented by P. Sousa e Silva, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
The Benriach Distillery Company Ltd, established in Edinburgh (United Kingdom),
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, W. Valasidis and L. Spangsberg Grønfeldt (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Instituto dos Vinhos do Douro e do Porto, IP (IVDP), seeks annulment and alteration of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 November 2023 (Case R 1885/2022-4) (‘the contested decision’).
Background to the dispute
2        On 29 January 2021, the other party to the proceedings before the Board of Appeal, The Benriach Distillery Company Ltd, filed an application for registration of an EU trade mark with EUIPO for the word sign PORTSOY.
3        The mark applied for designated the product 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 corresponds to the following description: ‘Scotch Whisky complying with the specifications of the [protected geographical indication (PGI)] Scotch Whisky’.
4        On 14 June 2021, the applicant filed a notice of opposition to registration of the mark applied for.
5        The opposition was based on protected designation of origin (PDO) No PDO-PT-A 1540 for the name ‘Port’, registered in the European Union for wine since 24 December 1991, in accordance with 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) (‘the earlier PDO’).
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).
7        On 4 August 2022, the Opposition Division rejected the opposition.
8        On 27 September 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal dismissed the appeal. It found that the goods at issue were not comparable and that the degree of similarity of the signs at issue was not sufficient to constitute a direct or indirect commercial use for the purposes of Article 103(2)(a)(i) and (ii) of Regulation No 1308/2013. It also found that there was no clear and direct connection between the contested sign and the earlier PDO and that, accordingly, use of the contested sign could not be regarded as an evocation of the earlier PDO within the meaning of Article 103(2)(b) of Regulation No 1308/2013.
Forms of order sought
10      The applicant claims, in essence, that the Court should:
–        annul and alter the contested decision in order to reject the application for registration of the mark applied for;
–        order EUIPO to pay the costs, including those incurred before the Opposition Division and the Board of Appeal.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
Law
12      The applicant raises, in essence, two pleas in law, alleging, first, infringement of Article 103(2)(a) of Regulation No 1308/2013 and, secondly, infringement of Article 103(2)(b) of that regulation, both provisions read in conjunction with Article 8(6) of Regulation 2017/1001.
13      EUIPO disputes those arguments and claims, in particular, that several annexes to the application were not submitted during the proceedings before the Board of Appeal. Accordingly, it argues, three excerpts from books by a British writer submitted in order to prove that the word ‘port’ is used to designate wine from Porto (Portugal) (‘port wine’); ten reproductions of port wine bottles submitted to prove that Portuguese consumers are accustomed to brands of wine which use the name of the earlier PDO; decisions adopted by Portuguese authorities and courts from 2002 onwards submitted to prove that applications for marks for alcoholic drinks starting with the element ‘port’ are rejected in Portugal; and extracts from various websites dedicated to wine, port wine and pairings of wine and food submitted to support the applicant’s arguments relating to the differences and similarities between whisky and port wine, must be declared inadmissible.
14      As a preliminary point, it should be noted that it is apparent from the contested decision that the wine protected by the earlier PDO is very well known and associated with the image of prestige, high quality and traditional products fulfilling strict requirements and quality standards.
15      That assessment is not disputed and there is no need to call it into question.
16      It is also necessary to observe that according to Article 8(6) of Regulation 2017/1001, upon opposition by any person who, like the applicant, is authorised under the relevant law to exercise the rights arising from a designation of origin, 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:
–        an application for a designation of origin 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;
–        that designation of origin confers the right to prohibit the use of a subsequent trade mark.
17      PDOs which, like the earlier PDO, concern wines are governed by Regulation No 1308/2013.
18      Under Article 102(1)(a) of Regulation No 1308/2013, the registration of a trade mark that contains or consists of a PDO concerning a wine listed in annex to that regulation and which does not comply with the product specification concerned or the use of which falls under Article 103(2) of that regulation is 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 to the European Commission and the designation of origin is subsequently protected.
19      In that regard, it must be observed that Article 103(2) of Regulation No 1308/2013 contains a graduated list of prohibited conduct, which is based on the nature of that conduct. Thus, the scope of Article 103(2)(a) of Regulation No 1308/2013 must necessarily be distinguished from that of Article 103(2)(b) thereof (see judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 36 and the case-law cited).
20      The latter provisions are drafted as follows:
‘2. A protected designation of origin …, 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 …;
(b) any … evocation, even if the true origin of the product or service is indicated or if the protected name is translated, transcripted or transliterated or accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation”, “flavour”, “like” or similar; …’
21      In assessing a potential conflict with a PDO, it is appropriate to refer to the perception of an average consumer who is reasonably well informed and reasonably observant and circumspect, that concept being understood as covering European consumers and not only consumers of the Member State in which the product giving rise to the use or evocation of the PDO is manufactured (see, to that effect, judgment of 7 June 2018, Scotch Whisky Association, C‑44/17, EU:C:2018:415, paragraph 47 and the case-law cited).
22      However, in so far as the legislation at issue in the present case protects designations of origin throughout the territory of the European Union, the concept of the average European consumer who is reasonably well informed and reasonably observant and circumspect must be interpreted in a way that guarantees effective and uniform protection of registered names throughout the territory of the European Union. Accordingly, a conflict assessed by reference to the consumers of a single Member State is sufficient to trigger the protection provided for by the EU regulations (judgment of 2 May 2019, Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego, C‑614/17, EU:C:2019:344, paragraphs 47 and 48).
23      That is the context in which the arguments of the parties must be assessed.
The first plea in law, alleging infringement of Article 103(2)(a)(i) and (ii) of Regulation No 1308/2013
24      The applicant claims, in essence, first, that the degree of similarity between the signs at issue is sufficient for the use of the contested sign to be classified as a direct or indirect commercial use of the earlier PDO for the purposes of Article 103(2)(a)(i) and (ii) of Regulation No 1308/2013; secondly, that wine and whisky are comparable products within the meaning of Article 103(2)(a)(i) of that regulation; and, thirdly, that the use of the contested sign to designate whisky would result in the exploitation of the reputation of the earlier PDO within the meaning of Article 103(2)(a)(ii) of that regulation.
The first complaint, alleging incorrect assessment of the degree of similarity between the signs when ascertaining the existence of a commercial use of the name protected by the earlier PDO
25      The applicant is of the opinion that the Board of Appeal erred in finding that the degree of similarity between the signs at issue was not sufficient for the use of the contested sign to be classified as a direct or indirect commercial use of the earlier PDO for the purposes of Article 103(2)(a)(i) and (ii) of Regulation No 1308/2013. First, in its view, the full reproduction of the name ‘Port’ of the earlier PDO in the contested sign constitutes a commercial use. Secondly, the signs are visually and phonetically similar to a particularly high degree. Thirdly, conceptually, it is incorrect to find that the element ‘port’ of the contested sign could mean ‘harbour’, in the sense of the location by the sea or a river, or have no meaning.
26      For an English-speaking consumer, the word ‘port’ also means ‘port wine’ (see The Oxford Advanced Learner’s Dictionary, 7th Edition, p. 1170). That meaning, it argues, is frequently used in English literature and is all the more relevant because the wine protected by the earlier PDO is very well known. Furthermore, it is not uncommon for brands of port wine to use words that include or start with the element ‘port’. The General Court adopted similar reasoning in a previous case, where it found that there were ‘strong similarities between the mark [contested in that case] and the PDO “Porto”’ and that it was ‘probable that the relevant consumer would associate that mark and that PDO’ (judgment of 6 October 2021, Esteves Lopes Granja v EUIPO – IVDP (PORTWO GIN), T‑417/20, not published, EU:T:2021:663, paragraphs 40, 41 and 48).
27      Similarly, in its view, for Portuguese-speaking consumers, who are used to seeing bottles of port wine labelled with marks that include the term ‘port’, there is a high probability of establishing a close connection with the name of the earlier PDO. They will read and hear the word ‘port’ as an element distinct and separable from the word ‘soy’ and will perceive it as a logical and conceptual unit relating to the earlier PDO.
28      EUIPO disputes the applicant’s arguments.
29      It should be recalled, first of all, that the scope of the protection afforded by Article 103(2)(a) of Regulation No 1308/2013 is particularly broad, in that those provisions are directed at any direct or indirect commercial use of a PDO and protect them against such use, both as regards comparable products which do not comply with the product specification 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 extent of that protection is consistent with the objective, confirmed in recital 97 of that regulation, of protecting PDOs against any use intended to take advantage of the reputation enjoyed by products which comply with the relevant specifications (see judgment of 6 October 2021, PORTWO GIN, T‑417/20, not published, EU:T:2021:663, paragraph 31 and the case-law cited).
30      In that context, as regards products which are not comparable, it has been noted in the case-law that Article 103(2)(a)(ii) of Regulation No 1308/2013 seeks to prohibit any direct or indirect use of a registered name exploiting the reputation of a PDO by registration, in a form that is phonetically and visually identical with that name or, at least, highly similar (see judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 37 and the case-law cited).
31      According to the case-law, that implies that there is ‘use’ of a PDO, within the meaning of Article 103(2)(a) of Regulation No 1308/2013, where the degree of similarity between the signs at issue is particularly high and close to identicality, visually and/or phonetically, in such a way that the protected name is used in a form with such close links to that name that the sign at issue clearly cannot be dissociated from it (judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 38).
32      The case-law also states that the concept of ‘use’, within the meaning of Article 103(2)(a) of Regulation No 1308/2013, must be interpreted strictly, as otherwise the distinction between that concept and, in particular, that of ‘evocation’, within the meaning of Article 103(2)(b) of that regulation, would be rendered moot, which would be contrary to the intention of the EU legislature (judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 40).
33      In the present case, after examining and rejecting the applicant’s complaint alleging commercial use of the earlier PDO for comparable products (see, below, the arguments submitted on that point in respect of the second complaint), the Board of Appeal found, in its assessment of the alleged commercial use of the earlier PDO for products which are not comparable and allegedly exploit its reputation, and by reference to its assessment of such alleged use for comparable products, that the degree of similarity between the signs at issue was not sufficient for the use of the contested sign to be classified as a direct or indirect commercial use of the earlier PDO for the purposes of Article 103(2)(a)(i) and (ii) of Regulation No 1308/2013.
34      As regards the visual and phonetic comparison, the Board of Appeal observed, in paragraphs 41 and 45 of the contested decision, that the contested sign fully included the name ‘port’ of the earlier PDO, which implied a certain degree of visual and phonetic similarity since the same letters were used at the beginning of the contested sign and in the earlier PDO. However, the Board of Appeal also found that, as noted by the Opposition Division, the signs at issue were not visually or phonetically similar to a particularly high degree, let alone close to identical, since the letters ‘p’, ‘o’, ‘r’ and ‘t’ are integrated in an element consisting of a single word nearly twice as long.
35      As regards the conceptual comparison, the Board of Appeal observed, in paragraphs 41 and 42 of the contested decision, that the beginning of the contested sign, which contains the same letters as the name ‘Port’ of the earlier PDO, will not be perceived by the relevant public as a reference to that name, but as the first part of a single word, nearly twice as long as the earlier PDO which is, in itself, meaningless. In that regard, the Board of Appeal stated, first, that, like the Opposition Division, it was of the opinion that the majority of the relevant public will perceive the contested sign as meaningless. It also acknowledged that, another – smaller – part of the relevant public, may associate the contested sign with a town in Aberdeenshire, Scotland, whose name comes from Port Saoithe, meaning ‘saithe harbour’.
36      Secondly, in paragraph 43 of the contested decision, the Board of Appeal indicated that, for the Spanish-speaking part of the relevant public, it is unlikely that the contested sign will be understood as meaning ‘I am port’. Even though ‘soy’ means ‘I am’ in Spanish, both the element ‘port’ and the whole term ‘portsoy’ are meaningless for that part of the relevant public. In addition, for the Spanish-speaking public, the expression which would have meaning is ‘soy oporto’, the name of the earlier PDO being ‘Oporto’ in Spanish. Consequently, the Board of Appeal concluded that the Spanish-speaking part of the relevant public will not artificially dissect the contested sign and the image of the earlier PDO will not come to their minds.
37      Thirdly, in paragraph 44 of the contested decision, the Board of Appeal noted that, in some languages, such as English, ‘soy’ indicates a ‘protein derived from soybeans’. In those circumstances, the Board of Appeal took the view, first of all, that the relevant public will not distinguish the second part of the contested sign, namely the element ‘soy’, when it is seen on a bottle of whisky. The Board of Appeal then found that, if the relevant public did dissect the second part of the contested sign as such, it would then associate the initial part, ‘port’, with the concept of a harbour, in the sense of the location by the sea or a river. In that case, the contested sign would accordingly be associated with a harbour dealing with soy shipments or a port named ‘Soy’, either one of those cases representing a logical and conceptual unit not relating to the earlier PDO.
38      In the light of those assessments and contrary to what the applicant claims, it is not necessary to find that the signs at issue were visually and phonetically similar to a particularly high degree. In the light of the differences and similarities between the signs noted in the contested decision (see paragraph 34 above), it is appropriate to find that the Board of Appeal was entitled to conclude that the signs were not visually or phonetically similar to a particularly high degree, let alone close to identical. Even though the beginning of the contested sign, namely the element ‘port’, fully reproduced the earlier PDO, that initial part was coupled with another part, the element ‘soy’, specific to the contested sign, which had to be taken in account both visually and phonetically.
39      Similarly, contrary to what the applicant claims, it is not necessary to find that the Board of Appeal made an error of assessment in finding that the word ‘port’ of the contested sign could be perceived as meaning ‘harbour’, in the sense of the location by the sea or a river, or regarded as a meaningless element.
40      As regards the concept conveyed by the contested sign, the Board of Appeal was entitled to take the view that, for the majority of the relevant public, the word ‘portsoy’ could be perceived as a meaningless term even though that word contained the same letters as the name ‘Port’ of the earlier PDO. The Board of Appeal was also entitled to take the view that, another – smaller – part of the relevant public, may associate the word ‘portsoy’ with the homonymous name of the town located in Aberdeenshire, Scotland, the origin of which comes from Port Saoithe, meaning ‘saithe harbour’. Since that meaning is far removed from the concept conveyed by the sign protected by the earlier PDO which is that of a wine that offers a guarantee of quality due to its geographical provenance, the Board of Appeal was entitled to find, in that context and in essence, that the conceptual comparison between the signs at issue was impossible or that the signs were not conceptually similar (see paragraph 35 above).
41      To allege, as the applicant does, that the average European consumer who is reasonably well informed and reasonably observant and circumspect would, if he or she were an English speaker or a Portuguese speaker familiar with English, connect the contested sign with the name ‘Port’ as protected by the earlier PDO for wine of fresh grapes due to the presence of the common element ‘port’ does not suffice to call into question the assessment of the Board of Appeal.
42      First of all, it is apparent from the applicant’s arguments that the meaning to which it refers, namely that which connects the initial part, ‘port’, of the contested sign with a wine of quality due to its geographical provenance, relates to a context in which wine is concerned. Therefore, according to The Oxford Advanced Learner’s Dictionary (7th Edition), as cited by the applicant, the third meaning of the word ‘port’ is ‘a strong sweet wine, usually dark red, that is made in Portugal[, which] is usually drunk at the end of a meal’. The same applies to the references made by the applicant to various names of port wines which start with the element ‘port’, and are consequently assessed in a context in which wine is concerned. In addition, the dictionary cited by the applicant confirms that the first two meanings of the word ‘port’ correspond, in essence, to a location by the sea or a river. Those meanings refer to the significance normally given to the term ‘port’ in a context in which wine is not particularly concerned.
43      Next, as EUIPO correctly stated, it must be observed that the association advocated by the applicant in the assessment of the concept conveyed by the contested sign seems unlikely where the relevant public encounters that sign in the context of whisky. In such a situation, the view cannot be taken that the mere use of the element ‘port’ in the word ‘portsoy’ is sufficient to constitute such a close connection with the geographical origin protected by the earlier PDO that it cannot be dissociated from that origin. On the contrary, the more likely scenario, as the Board of Appeal found in the contested decision, is that, in such a situation, the word ‘portsoy’ would be perceived by the relevant public, which would break the contested sign down into two elements, ‘port’ and ‘soy’, as a logical and conceptual unit referring either to a harbour, in the sense of the location by the sea or a river, dealing in soy or named ‘Soy’, or to a fanciful and meaningless expression, without that public connecting it to the PDO of a wine of quality due to its geographical provenance. In the same vein, nothing in the file suggests that if, as the applicant claims, an English-speaking consumer ordered ‘portsoy’ in a bar, he or she would be offered port wine and not whisky bearing the name of a town located in Scotland.
44      Lastly, it was not appropriate in the present case for the Board of Appeal to reason by analogy to the solution adopted in the judgment of 6 October 2021, PORTWO GIN, (T‑417/20, not published, EU:T:2021:663, paragraphs 40, 41, 44 and 48). As EUIPO correctly states, there are significant differences between that case and the present one, in particular since, in order to find that the Board of Appeal had not made an error of assessment by concluding that it was likely that the consumer concerned would associate the sign PORTWO GIN with the name ‘Port’ of the earlier PDO, the Court highlighted two circumstances which are not found in the present case. In the case in PORTWO GIN, the Court accordingly noted, among other aspects of its analysis, that it could not be ruled out that the letter ‘w’ of the first word ‘portwo’ of the sign contested in that case might be perceived as a spelling mistake by a significant part of the relevant public. The Court also highlighted the fact that the second word ‘gin’ of the sign at issue in that case could indeed be regarded as a term describing the products concerned in that case, namely spirits, and was therefore devoid of distinctive character. In those circumstances, the Court held that there was such a close connection between the signs that the sign contested in that case was clearly indissociable from the earlier PDO.
45      That is not the situation in the present case, where the Board of Appeal correctly set out the reasons for which the signs at issue were not sufficiently similar for it to conclude that the contested sign was clearly indissociable from the earlier PDO.
46      In that context, the applicant is not convincing when it states that the full reproduction of the name ‘Port’ of the earlier PDO in the contested sign is sufficient to constitute a commercial use of the earlier PDO for the purposes of Article 103(2)(a) of Regulation No 1308/2013.
47      To accept such an argument would amount to not taking into account the correct assessments made by the Board of Appeal in the contested decision as regards the degree of similarity of the signs at issue, which allowed it to conclude, in accordance with the case-law cited in paragraph 31 above, that the similarity between the signs was not sufficient for the use of the contested sign to be classified as a commercial use.
48      Consequently, it is necessary to reject the applicant’s arguments disputing the finding of the Board of Appeal that the degree of similarity between the signs at issue was not sufficient for the use of the contested sign to be classified as a commercial use of the earlier PDO for the purposes of Article 103(2)(a)(i) and (ii) of Regulation No 1308/2013.
The second complaint, alleging incorrect classification of wine and whisky as products which are not comparable
49      The applicant submits that, in the light of the similarities between the goods in question, it is incorrect to regard port wine and whisky as not being ‘comparable products’ within the meaning of Article 103(2)(a)(i) of Regulation No 1308/2013.
50      First, it argues, the solution adopted by 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 125 and 126), to which the Board of Appeal refers in the contested decision, is not relevant. It is a specific case with facts and evidence which differ from those of the present case, where several factual errors were made which could not be corrected by the Court of Justice on appeal (judgments of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto, C‑56/16 P, EU:C:2017:693, paragraphs 112 and 113, and 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, paragraphs 31 and 32).
51      Secondly, in its view, the concept of ‘comparable products’, as interpreted by EUIPO in the light of the earlier case-law, is not consistent with the structure and aims of Article 103 of Regulation No 1308/2013. The decision-making practice of EUIPO is contradictory as shown by the decision of the Fourth Board of Appeal of 23 November 2023 (Case R 1019/2023-4, PORTE NOIRE/Port, paragraphs 70 to 73), which found that brandy and distilled spirits were similar to wine while deciding that whisky and wine were not similar, even though whisky is also a distilled spirit. Such an approach relies on an extremely narrow conception of ‘comparable products’ which should be corrected so that coherent criteria prevail and guidance consistent with the aims and rules protecting designations of origin in the European Union prevail.
52      Thirdly, as regards the factors to be taken into consideration when classifying goods as ‘comparable products’, it must be noted that, when it assessed the comparability of spirit drinks in the light 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), the Court of Justice held that two products were comparable if they ‘[had] common objective characteristics and [were] consumed, from the point of view of the relevant public, on occasions which [were] largely identical’ and ‘they [were] frequently distributed through the same channels and subject to similar marketing rules’ (judgment of 14 July 2011, Bureau national interprofessionnel du Cognac, C‑4/10 and C‑27/10, EU:C:2011:484, paragraph 54). Other factors may be considered for the purpose of that classification under Article 103(2)(a)(i) of Regulation No 1308/2013, such as the nature of the products, their intended purpose, their method of use, their complementarity, the existence of competition, or the relevant public, that is to say all the relevant factors that define the relationship between the products (see, by analogy, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 23).
53      In the contested decision, the Board of Appeal ignored certain factors referred to in the judgment of 14 July 2011, Bureau national interprofessionnel du Cognac (C‑4/10 and C‑27/10, EU:C:2011:484); relied on factors other than those referred to in that judgment, such as the methods of production; ignored other factors put forward by the applicant, such as the nature of the products (alcoholic beverages), the similar prices, and the existence of competition between whisky and port wine as regards the consumers targeted; and misunderstood the occasions on which whisky and port wine are consumed.
54      In the present case, the comparison of the products supports the conclusion that port wine and whisky are similar as regards their nature, intended purpose, physical appearance, methods and occasions of use, distribution channels, and marketing rules or methods, and differ only as regards their origin, method of production and alcohol content. The applicant observes, in that regard, that, in the context of trade mark protection, EUIPO’s search tool classifies whisky as a product ‘similar’ to wine. The same is true for most registrars of national trade marks.
55      In that context, it argues, the Board of Appeal may not limit itself to comparing the products in the light of their raw material, grapes or grain, or the provisions which protect their designations of origin, relating to grapevine products or spirit drinks. Nothing in Article 103(2)(a)(i) of Regulation No 1308/2013 supports the conclusion that ‘comparable products’ is a category restricted to wines.
56      EUIPO disputes the applicant’s arguments.
57      It must be recalled that, according to Article 103(2)(a)(i) of Regulation No 1308/2013, a PDO, and the wine using that protected name in conformity with the product specifications, are protected against ‘any direct or indirect commercial use of that protected name by comparable products not complying with the product specification of the protected name’.
58      In order to benefit from that protection, it therefore appears necessary, as the Board of Appeal correctly observes in paragraph 28 of the contested decision, to satisfy two cumulative conditions.
59      First of all, it is necessary to ascertain whether the contested sign is a direct or indirect commercial use of the name protected by the earlier PDO, which was already answered in the negative following the assessment of the first complaint (see paragraphs 25 to 48 above).
60      In that regard, due to the cumulative nature of the conditions, the mere lack of a commercial use of the name protected by the earlier PDO for the purposes of Article 103(2)(a)(i) and (ii) of Regulation No 1308/2013 is sufficient to preclude the protection provided for by that provision from applying. The arguments submitted in respect of the second complaint, which relate exclusively to the second condition, are therefore ineffective.
61      Next, in any event, as regards the second condition, to which the second complaint put forward by the applicant relates, it is necessary to ascertain whether whisky which complies with the specifications of the PGI ‘Scotch Whisky’ (‘whisky’) is comparable to a wine, namely, in the present case, port wine, which complies with the product specification of the name ‘Port’ of the earlier PDO.
62      In the present case, when comparing the products in question, the Board of Appeal began by recalling, in paragraphs 31 and 32 of the contested decision, that the contested sign was intended to protect Scotch Whisky complying with the specifications of the PGI ‘Scotch Whisky’. It then noted that whisky was not a grapevine product within the meaning of Article 102(1) of Regulation No 1308/2013 and that it was protected by a separate piece of legislation, namely Regulation (EU) 2019/787 of the European Parliament and of the Council of 17 April 2019 on the definition, description, presentation and labelling of spirit drinks, the use of the names of spirit drinks in the presentation and labelling of other foodstuffs, the protection of geographical indications for spirit drinks, the use of ethyl alcohol and distillates of agricultural origin in alcoholic beverages, and repealing Regulation (EC) No 110/2008 (OJ 2019 L 130, p. 1).
63      The Board of Appeal also recalled, in paragraphs 33 to 35 of the contested decision, that there were significant differences between the features of the goods under comparison in terms of, inter alia, ingredients, alcohol content, and taste, of which the average consumer is well aware. It stated, in that regard, that the finding that wine and whisky were not comparable and the not insignificant differences between the products in question, which supported that finding, had been confirmed by the case-law of the Court of Justice and the General Court (judgments of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto, C‑56/16 P, EU:C:2017:693, paragraphs 125 and 126, and of 18 November 2015, PORT CHARLOTTE, T‑659/14, EU:T:2015:863, paragraphs 64, 65 and 76).
64      In that regard, contrary to what the applicant claims, there is no need to depart from the findings of fact made by the previous case-law concerning a whisky, designated by the word sign PORT CHARLOTTE, as compared to the name ‘Port’ of the earlier PDO and to the port wine it protects, in order to ascertain whether that sign was a direct or indirect commercial use of that name for comparable products not complying with the product specification (judgments of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto, C‑56/16 P, EU:C:2017:693, paragraphs 125 and 126, and of 18 November 2015, PORT CHARLOTTE, T‑659/14, EU:T:2015:863, paragraphs 65 and 76).
65      It is apparent from the findings of fact confirmed by the judgments of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto (C‑56/16 P, EU:C:2017:693), and of 18 November 2015, PORT CHARLOTTE (T‑659/14, EU:T:2015:863, paragraphs 65 and 76), first, 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’, and, secondly, that there are ‘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’.
66      Those findings of fact, made by the Board of Appeal in the case in PORT CHARLOTTE, are not affected by the errors noted by the General Court and the Court of Justice, which, as EUIPO correctly stated, have no bearing on whether port wine and whisky are comparable within the meaning of Article 103(2)(a)(i) of Regulation No 1308/2013. In addition, there is also nothing in the file which calls into question those findings of fact, which are, moreover, not, in themselves, disputed by the applicant.
67      Such objective characteristics could legitimately be taken into consideration in order to ascertain whether whisky is comparable to wine under Article 103(2)(a)(i) of Regulation No 1308/2013.
68      Furthermore, the applicant is incorrect in its claim that it is appropriate, in essence, to leave the context specific to PDOs, in particular in the wine sector, in order to enter into the general context of trade mark law.
69      It should be recalled that designations of origin fall within the scope of industrial and commercial property rights and 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. In that way, those designations are intended to guarantee that the product bearing them comes from a specified geographical area and displays certain particular characteristics (see, to that effect, judgment of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto, C‑56/16 P, EU:C:2017:693, paragraph 81 and the case-law cited).
70      It was, accordingly, in such a context, that of a comparison between port wine, which comes from a specified geographical area and displays certain particular characteristics, and whisky, that the Board of Appeal had to carry out its assessment. Therefore, the Board of Appeal was correct to highlight the differences noted in paragraphs 62 and 63 above as regards the objective characteristics of the products in question.
71      Since those differences suffice for the products at issue to be regarded as not comparable, it is not necessary to compare any other features of the products at issue such as those put forward by the applicant, namely the fact that they are both alcoholic beverages. While that is the case, those alcoholic beverages are not comparable when ascertaining the scope of the protection conferred by Article 103(2)(a)(i) of Regulation No 1308/2013 for the reasons set out on that point by the Board of Appeal in paragraphs 31 to 35 of the contested decision.
72      In addition, in response to the applicant’s argument that the reference made to the ‘product specification’ in Article 103(2)(a)(i) of Regulation No 1308/2013 only concerns protected products and not those which infringe that protection, it has already been held for an analogous provision that such a provision requires that ‘comparable products’ be those ‘not complying with the product specification’, which, in the present case, is possible only for a wine and not for a whisky. That is all the more true since it is apparent from Regulation 2019/787, which replaced Regulation No 110/2008, that whisky is 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, by analogy, judgment of 18 November 2015, PORT CHARLOTTE, T‑659/14, EU:T:2015:863, paragraph 66).
73      Consequently, it is necessary, in any event, to reject the applicant’s arguments disputing the finding of the Board of Appeal that whisky which respects the specifications of the PGI ‘Scotch Whisky’ is not comparable to port wine protected by the earlier PDO.
74      Accordingly, it follows from the foregoing that the cumulative conditions to which Article 103(2)(a)(i) of Regulation No 1308/2013 makes benefiting from the protection of a protected name subject are not met.
The third complaint, alleging that the use of the contested sign to designate whisky would result in the exploitation of the reputation of the earlier PDO
75      The applicant notes that, as a result of the errors raised in the examination of the first and second complaints, the Board of Appeal found that it had failed to submit evidence or coherent arguments to demonstrate how the use of the contested sign to designate products which were not comparable would result in the exploitation of the reputation of the earlier PDO. In so doing, it argues, the Board of Appeal undervalued the arguments submitted in support of the first complaint, namely the incorporation of the name ‘Port’ of the earlier PDO at the beginning of the contested sign; the very strong visual and phonetic similarity which the applicant alleged exists between the signs at issue; and the significance which English- and Portuguese-speaking consumers will automatically give to the beginning of the contested sign. Consequently, the Board of Appeal should have found that, when faced with the contested sign, the relevant public will take the view that the alcoholic beverage designated by the mark applied for will have the same quality standards and tradition as the port wine protected by the earlier PDO.
76      EUIPO disputes the applicant’s arguments.
77      As a preliminary point, it must be observed, as EUIPO stated, that the third complaint can be set aside for the sole reason that there can be no exploitation of the reputation of the earlier PDO without use thereof. It is apparent from paragraphs 33 to 48 above that the Board of Appeal was correct to find that the degree of similarity of the signs at issue was not sufficient for the use of the contested sign to be classified as a commercial use for the purposes of Article 103(2)(a)(ii) of Regulation No 1308/2013.
78      In any event, it should be recalled that, in order to assess the complaint alleging exploitation of the reputation of the earlier PDO and of the wine which it protects owing to the use of the contested sign for whisky, the Board of Appeal applied to the present case the solution previously adopted by the Court of Justice in a case which also involved the earlier PDO and a whisky. According to the Court of Justice, the incorporation, in a sign applied for, of the name ‘Port’ used by the earlier PDO cannot be held to be capable of exploiting the reputation of that designation of origin, for the purposes of Article 103(2)(a)(ii) of Regulation No 1308/2013, if that incorporation does not lead the relevant public to associate that sign or the goods in respect of which it is registered with the designation of origin concerned or the wine in respect of which it is protected (judgment of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto, C‑56/16 P, EU:C:2017:693, paragraph 115).
79      In the light of that reasoning, which is based, inter alia, as EUIPO correctly stated, on the finding that the similarity of the signs was not sufficient for the use of the contested sign to be classified as a commercial use of the earlier PDO for the purposes of Article 103(2)(a)(ii) of Regulation No 1308/2013, it is clear that the Board of Appeal was entitled to conclude that the incorporation in the contested sign of the name ‘Port’ used by the earlier PDO was not capable of exploiting the reputation of that designation of origin (see, to that effect, judgment of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto, C‑56/16 P, EU:C:2017:693, paragraph 115).
80      Accordingly, contrary to what the applicant claims and for the reasons stated previously, it seems unlikely that the mere incorporation of the element ‘port’ in the contested sign in order to designate whisky would be sufficient to establish an association between the contested sign and the name ‘Port’ used by the earlier PDO to protect wines based on their quality and geographical provenance.
81      Lastly, and in any event, it must be found that none of the arguments submitted by the applicant can call into question the finding of the Board of Appeal in the contested decision that the applicant ‘failed to adduce evidence and/or at least develop a coherent line of argument to demonstrate specifically how, taking into account the signs and all the relevant circumstances, the use of the contested sign in relation to the non-comparable goods would result in exploitation of the reputation of the earlier PDO …’.
82      The applicant merely makes general statements regarding the similarity of the signs at issue and the fact that there is, in its view, almost automatic exploitation of the reputation of the earlier PDO and its image irrespective of the nature of the products concerned.
83      In particular, the communication by the applicant to the Court of several decisions adopted by Portuguese authorities and courts from 2002 onwards, submitted to prove that applications for registration of the marks for alcoholic drinks PORTDOWN, PORTGAY, PORTÚNICO, PORTOPLAY, PORTROYAL, PORTIT DRINKS, PORTULANO RUM, PORTALTO, PORTOCRISTO, PORTOINHO, PORTSAUCE, PORTOLIVES, PORTOLIVE, PORTEL.PT, PORTOBELLO, PORTOMATE, PORTOCELLO, PORTOFINO, PORTULACA, PORTUM and PORTTABLE were rejected in Portugal, cannot suffice to call into question the validity of the reasoning of the Board of Appeal set out in paragraphs 77 to 81 above.
84      It should be noted that, according to settled case-law, the EU trade mark regime is autonomous and that the legality of decisions of the Boards of Appeal is assessed solely on the basis of Regulation 2017/1001, with the result that EUIPO, or, on appeal, the General Court, is not required to reach the same conclusions as those arrived at by national authorities or courts in similar circumstances (see judgment of 15 December 2015, LTJ Diffusion v OHIM – Arthur et Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 37 and the case-law cited).
85      In addition, to support its application, the applicant merely stated that, ‘not surprisingly, there [were] several judicial and administrative decisions, in Portugal, rejecting the registration of trade marks starting with the term “PORT”, for alcoholic beverages’ while referring, without further detail, to the content of the corresponding decisions submitted in annex. By contrast, it did not develop any specific arguments capable of calling into question the reasoning of the Board of Appeal as regards, in particular, the way in which the use of the contested sign to designate products which were not comparable would result in exploitation of the reputation of the earlier PDO.
86      Consequently, in the absence of any duly substantiated arguments, it is necessary to reject the applicant’s arguments disputing the finding of the Board of Appeal that, in essence, the use of the contested sign was not capable of exploiting the reputation of the earlier PDO within the meaning of Article 103(2)(ii) of Regulation No 1308/2013.
87      Accordingly, the first plea in law must be rejected as unfounded.
The second plea in law, alleging infringement of Article 103(2)(b) of Regulation No 1308/2013
88      The applicant submits that the Board of Appeal made several errors of assessment by finding that the contested sign did not amount to evocation of the name ‘Port’ of the earlier PDO within the meaning of Article 103(2)(b) of Regulation No 1308/2013. First, as has already been stated, it is incorrect to find that ‘the relevant public will perceive the contested sign as a one-word meaningless term, as a reference to a town in Scotland or as a logical and conceptual unit with its own meaning completely unrelated to the earlier PDO’. Secondly, as has also already been stated, the Board of Appeal did not correctly evaluate and weigh the differences and similarities between Port wine and whisky. In the applicant’s view, the relevant public, when confronted with a bottle of whisky displaying the contested sign, will be led to believe that, or at least to wonder whether, the drink in question is related to Port wine, which amounts to evocation.
89      EUIPO disputes the applicant’s arguments.
90      It should be borne in mind, first of all, that, unlike the conduct referred to in Article 103(2)(a) of Regulation No 1308/2013, the actions which fall within the scope of Article 103(2)(b) thereof do not use the protected name itself either directly or indirectly, but suggest it in such a way that it causes the consumer to establish a sufficiently close connection with that name (see judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 39 and the case-law cited).
91      The Court of Justice has specified that such a connection between the contested sign and the product which has a protected name must be sufficiently clear and direct, and therefore a mere association with the PDO or the geographical zone relating thereto cannot be used (see, to that effect, judgments of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 22, and of 7 June 2018, Scotch Whisky Association, C‑44/17, EU:C:2018:415, paragraph 53).
92      In that context, it has been noted in the case-law 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 is confronted with the name of the product, the image triggered in his or her mind is that of the product whose designation is protected (see judgment of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto, C‑56/16 P, EU:C:2017:693, paragraph 122 and the case-law cited).
93      However, the partial incorporation of a PDO in the contested sign is not a necessary condition for there to be evocation. Indeed, there may be evocation of a PDO where, concerning products which are similar in appearance, the sales names are phonetically and visually similar (see, to that effect and by analogy, judgments of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 33 and the case-law cited, and of 7 June 2018, Scotch Whisky Association, C‑44/17, EU:C:2018:415, paragraph 48).
94      However, evocation may exist in the absence of phonetic and visual similarities between the signs at issue, in particular where there is conceptual proximity between terms emanating from different languages. It is nevertheless necessary that the proximity between the signs, irrespective of its origin, be capable of bringing to the mind of the consumer the product which has a protected name, when he or she is confronted with a similar product bearing the disputed name (see, to that effect and by analogy, judgments of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 35, and of 7 June 2018, Scotch Whisky Association, C‑44/17, EU:C:2018:415, paragraphs 49 and 50).
95      It follows from the foregoing that, in order to establish an evocation within the meaning of Article 103(2)(b) of Regulation No 1308/2013, the Board of Appeal was entitled to find, in paragraph 55 of the contested decision, that the decisive criterion in the present case was whether, when members of the relevant public were confronted with the contested sign, the image triggered directly in their mind was that of the product covered by the earlier PDO, taking into account, as the case may be, the partial incorporation of the name protected by the earlier PDO in the contested sign, the visual and/or phonetic similarity, or the conceptual proximity between them (judgment of 7 June 2018, Scotch Whisky Association, C‑44/17, EU:C:2018:415, paragraphs 51 and 56, and order of 23 March 2023, Domaine Boyar International v EUIPO – Consorzio DOC Bolgheri e Bolgheri Sassicaia (BOLGARÉ), T‑300/22, not published, EU:T:2023:159, paragraph 35).
96      In the present case, as regards the complaint alleging evocation of the earlier PDO, the Board of Appeal stated in the contested decision that, for the reasons set out therein, the relevant public will perceive the contested sign as a one-word meaningless term, as a reference to a town in Scotland or as a logical and conceptual unit with its own meaning completely unrelated to the earlier PDO. The Board of Appeal further specified that, although the contested sign includes the four letters of the name ‘Port’ of the earlier PDO in the same order at its beginning, the overall similarity between the signs at issue was not particularly high and the differences between them would not remain unnoticed. Moreover, the Board of Appeal stated that, since the contested sign would be used on a whisky bottle, any association with the wine protected by the earlier PDO was highly unlikely. Consequently, the Board of Appeal found that the relevant public would not establish a connection between the contested sign, applied for to designate Scotch Whisky complying with the specifications of the PGI ‘Scotch Whisky’, and the wine protected by the earlier PDO. That finding is confirmed, according to the Board of Appeal, by the not insignificant differences between the features of a wine protected by an earlier PDO and a Scotch Whisky complying with the specifications referred to above. Lastly, the Board of Appeal indicated that the applicant had failed to submit evidence or develop coherent arguments to demonstrate the connection between the contested sign used for whisky and the name ‘Port’ of the earlier PDO.
97      It is clear that no aspect of that assessment is called into question by the applicant’s arguments.
98      The Board of Appeal was entitled to find, in the light of the case-law and the comparison of the signs at issue and the features specific to the wine, on the one hand, and to a whisky complying with the specifications of the PGI ‘Scotch Whisky’, on the other, that there was no reason to believe that, when confronted with the contested sign used to designate whisky, the relevant consumer would establish a sufficiently clear and direct connection between that sign and the wine protected by the name ‘Port’ of the earlier PDO (see, to that effect and by analogy, judgments of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto, C‑56/16 P, EU:C:2017:693, paragraphs 124 and 125, and of 18 November 2015, PORT CHARLOTTE, T‑659/14, EU:T:2015:863, paragraph 76).
99      It may be considered that the Board of Appeal did not make any error of assessment by finding, in the conclusion of the reasoning set out in the contested decision, that, even if the term ‘port’ forms an integral part of the contested sign, the average consumer, even if he or she is an English speaker or a Portuguese speaker familiar with the English language, when confronted with a whisky bearing that sign, will not associate it with a port wine covered by the earlier PDO. Such an assessment is confirmed by the significant differences between the respective features of a port wine and a whisky in terms of, inter alia, ingredients, alcohol content, flavour, methods of production, and methods of use, of which the average consumer is well aware.
100    Similarly, it must be observed that none of the arguments submitted by the applicant in respect of the present action calls into question the finding made by the Board of Appeal in paragraph 60 of the contested decision that ‘[the applicant] failed to provide evidence and/or at least develop a coherent line of argument to demonstrate the link between the contested sign used to designate Scotch Whisky complying with the specifications of the PGI “Scotch Whisky” and [the name “Port” of] the earlier PDO’ (see paragraph 60 of the contested decision). On that point, it is clear that the new evidence submitted by the applicant (see paragraph 13 above) would not, even if it could be taken into account, be capable of calling into question the finding of the Board of Appeal that there are significant differences between the respective features of a port wine and a whisky.
101    Without it being necessary to rule on the plea of inadmissibility raised by EUIPO regarding the contested annexes (see paragraph 13 above) which do not concern the decision-making practice of a national authority or court (see, in that regard, judgment of 24 April 2024, Tsakiris v EUIPO – Coca-Cola 3E Ellados (Le Petit Déjeuner TSAKIRIS FAMILY), T‑303/23, not published, EU:T:2024:269, paragraphs 21 and 22 and the case-law cited, and paragraphs 83 to 85 above), it is clear that the new evidence submitted by the applicant is not capable of calling into question the significant differences, as referred to above, between the respective features of a port wine and a whisky.
102     Furthermore, in any event, it is apparent from the case-law that the assessment of the concept of ‘evocation’ takes into consideration all relevant factors surrounding the use of the name in question, including the question of whether similarities with an earlier PDO are ‘fortuitous’ (see, to that effect, judgment of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraphs 39 and 40). Therefore, since, as is indicated in the contested decision, the contested sign uses the name of a town located in Aberdeenshire, in Scotland, the territory in which Scotch Whisky is produced in compliance with the specifications of the PGI ‘Scotch Whisky’, any similarity between the contested sign and the earlier PDO is completely fortuitous.
103    Consequently, it is necessary to reject the applicant’s arguments disputing the finding of the Board of Appeal that, in essence, the use of the contested sign was not capable of evoking the reputation of the earlier PDO within the meaning of Article 103(2)(b) of Regulation No 1308/2013.
104    Accordingly, the second plea in law must be rejected as unfounded, and, consequently, the action must be dismissed in its entirety without it being necessary to rule on the plea of inadmissibility raised by EUIPO regarding the annexes submitted for the first time before the Court.
Costs
105    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.
106    Even though the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event that an oral hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders each party to bear its own costs.
Marcoulli
Valasidis
Spangsberg Grønfeldt
Delivered in open court in Luxembourg on 26 February 2025.
V. Di Bucci
S. Papasavvas
Registrar
President
*Language of the case: English.