European Union Intellectual Property Office (EUIPO) v Instituto dos Vinhos do Douro e do Porto, IP.
Date: 2017-09-14
66


Furthermore, it submits that the General Court carried out the appropriate legal test because, according to settled case-law, 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 mind is that of the product whose designation is protected (see, to that effect, judgment of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 21 and the case-law cited).
74


That ground of appeal relates to paragraphs 38 and 41 of the judgment under appeal by which the General Court held as follows:





‘38


… in accordance with the spirit and system of the single regulatory framework of the common agricultural policy (recital 1 in the preamble to Regulation No 491/2009; see also, to that effect and by analogy with Regulation No 510/2006, judgment of 8 September 2009 in Budějovický Budvar, C‑478/07, … EU:C:2009:521, paragraph 107 et seq.), as regards the scope of Regulation No [1234/2007], the precise conditions and scope of that protection are laid down exclusively in Article 118m(1) and (2) of that regulation.



…





41


It must accordingly be concluded that, as regards the scope of Regulation No [1234/2007], Article 118m(1) and (2) governs, in a uniform and exclusive manner, both the authorisation of and limits to, and even the prohibition of, commercial use of the protected designations of origin and of the protected geographical indications under EU law, so that, in that specific context, there was no need for the Board of Appeal to apply the conditions for protection specifically established in the relevant rules of Portuguese law which were the basis for the entry of the appellations of origin “[P]orto” or “[P]ort” in the E-Bacchus database.’
81


In that regard, the Court stated that designations of origin fall within the scope of industrial and commercial property rights. 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. They are intended to guarantee that the product bearing them comes from a specified geographical area and displays certain particular characteristics. They may enjoy a high reputation amongst consumers and constitute for producers who fulfil the conditions for using them an essential means of attracting custom. The reputation of designations of origin depends on their image in the minds of consumers. That image in turn depends essentially on particular characteristics and more generally on the quality of the product. It is on the latter, ultimately, that the product’s reputation is based. For consumers, the link between the reputation of the producers and the quality of the products also depends on their being assured that products sold under the designation of origin are authentic (judgment of 8 September 2009, Budějovický Budvar, C‑478/07, EU:C:2009:521, paragraph 110 and the case-law cited).
82


It follows from this that Regulation No 1234/2007 constitutes an instrument of the common agricultural policy essentially intended to assure consumers that agricultural products bearing a geographical indication registered under that regulation 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 (see, by analogy, judgment of 8 September 2009, Budějovický Budvar, C‑478/07, EU:C:2009:521, paragraph 111).
83


If the Member States were permitted to allow their producers to use, within their national territories, one of the indications or symbols which are reserved, under Regulation No 1234/2007, for designations registered under that regulation, on the basis of a national right which could meet less strict requirements than those laid down in that regulation for the products in question, the risk is that that assurance of quality, which constitutes the essential function of rights conferred pursuant to Regulation No 1234/2007, could not be guaranteed. To confer such a discretion on those national producers would also carry the risk of jeopardising the attainment of free and undistorted competition in the internal market between producers of products bearing those indications or symbols and, in particular, would be liable to harm rights which ought to be reserved for producers who have made a genuine effort to improve quality in order to be able to use a geographical indication registered under that regulation (see, by analogy, judgment of 8 September 2009, Budějovický Budvar, C‑478/07, EU:C:2009:521, paragraph 112).
84


The risk of thus undermining the main objective of Regulation No 1234/2007, which is that of guaranteeing the quality of the agricultural products concerned, is particularly high because, unlike in the case of trade marks, no measure harmonising any national systems of protection for geographical indications has to date been adopted by the EU legislature (see, by analogy, judgment of 8 September 2009, Budějovický Budvar, C‑478/07, EU:C:2009:521, paragraph 113).
86


First, in contrast to other EU-law systems for the protection of industrial and commercial property rights, such as that relating to the EU trade mark, which is provided for by Regulation No 207/2009, or that relating to plant variety rights, which is provided for by Regulation No 2100/94, the procedure for registering designations of origin and geographical indications under Regulation No 1234/2007 is based on powers shared between the Member State concerned and the Commission, since the decision to register a designation may be taken by the Commission only if the Member State concerned has submitted to it an application for that purpose and such an application may be made only if the Member State has checked that it is justified (see, by analogy, judgment of 8 September 2009, Budějovický Budvar, C‑478/07, EU:C:2009:521, paragraph 116).
87


The national registration procedures are therefore incorporated in the decision-making procedure at EU level and constitute an essential part thereof. They cannot exist outside the EU system of protection (see, by analogy, judgment of 8 September 2009, Budějovický Budvar, C‑478/07, EU:C:2009:521, paragraph 117).
88


With regard to the registration procedure, it is also telling that Article 118f(7) of Regulation No 1234/2007, a provision essentially identical to Article 38(7) of Regulation No 479/2008, provides that Member States may, on a transitional basis only, grant national protection to a name until a decision on the application for registration is taken by the Commission (see, by analogy, as regards Article 5(6) of Regulation No 510/2006, judgment of 8 September 2009, Budějovický Budvar, C‑478/07, EU:C:2009:521, paragraph 118).
89


It follows from that provision that, under the system introduced by Regulation No 1234/2007, where Member States have the power to adopt decisions, even of a provisional nature, which derogate from the provisions of that regulation, that power is derived from express rules (see, by analogy, as regards Article 5(6) of Regulation No 510/2006, judgment of 8 September 2009, Budějovický Budvar, C‑478/07, EU:C:2009:521, paragraph 119).
90


Furthermore, a provision of that kind would be rendered redundant if the Member States were able to retain their own systems of protection for designations of origin and geographical indications for the purposes of Regulations No 1234/2007 and No 479/2008 and have them coexist with that resulting from those regulations (see, by analogy, judgment of 8 September 2009, Budějovický Budvar, C‑478/07, EU:C:2009:521, paragraph 120).
91


Secondly, the fact that the system of protection laid down in Regulations No 1234/2007 and No 479/2008 is exhaustive in nature is also evidenced by the transitional arrangements for existing national geographical designations such as the designation of origin ‘Porto’ or ‘Port’ (see, by analogy, judgment of 8 September 2009, Budějovický Budvar, C‑478/07, EU:C:2009:521, paragraph 121).
92


Accordingly, Article 118s of Regulation No 1234/2007, a provision which is essentially identical to Article 51 of Regulation No 479/2008, provides for a transitional system of protection, the aim of which is to maintain, for reasons of legal certainty, the protection of wine names already provided for prior to 1 August 2009 under national law. That transitional system of protection is, as is apparent from the wording of Article 118s(1) of Regulation No 1234/2007, organised at EU level pursuant to Regulation No 1493/1999 and granted automatically to wine names already protected under, inter alia, that latter regulation (see, to that effect, judgment of 13 February 2014, Hungary v Commission, C‑31/13 P, EU:C:2014:70, paragraph 58).
94


Such a transitional system of protection for existing designations of origin and geographical indications would be pointless if the system of protection for such names which is provided for by Regulation No 1234/2007 were not exhaustive in nature, implying that the Member States retained in any event the ability to maintain them for an indefinite period (see, by analogy, judgment of 8 September 2009, Budějovický Budvar, C‑478/07, EU:C:2009:521, paragraph 128).
107


Although Regulation No 1234/2007 does not, in principle, preclude ‘a simple … indication of geographical provenance’, that is to say, a name in respect of which there is no direct link between a specific quality, reputation or other characteristic of the product and its specific geographical origin, so that it does not come within the scope of Regulation No 1234/2007 (see, by analogy, judgment of 8 September 2009, Budějovický Budvar, C‑478/07, EU:C:2009:521, paragraph 73 and the case-law cited), from being protected under national law, the same is not true when, as in the present case, the dispute relates to a designation of origin which is attributed to a wine and which is covered by that regulation.
122


According to that case-law, that 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 mind is that of the product whose designation is protected (see, in particular, as regards Article 16(b) 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), a provision which is in all respects identical to Article 118m(2)(b) of Regulation No 1234/2007, judgment of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 21 and the case-law cited).
123


Furthermore, there can be ‘evocation’ even in the absence of any likelihood of confusion between the products concerned, since what matters is, in particular, that an association of ideas regarding the origin of the products is not created in the mind of the public, and that a trader does not take undue advantage of the reputation of the protected geographical indication (see, in particular, judgment of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 45).