In 2019, the Italian company Nero Lifestyle filed with the European Union Intellectual Property Office (EUIPO) an application for registration of the word sign NERO CHAMPAGNE. That application concerns certain goods and services, including ‘wine complying with the specifications of the protected designation of origin (PDO) “Champagne.”’
The Comité interprofessionnel du vin de Champagne and the Institut national de l’origine et de la qualité objected to registration on the ground, inter alia, that the PDO ‘Champagne’ has been registered since 1973. They maintain that the trade mark NERO CHAMPAGNE is likely to take unfair advantage of the reputation of the PDO products whose protection is essentially intended to assure consumers that they have certain specific characteristics and, therefore, offer a guarantee of quality due to their geographical provenance.
Since the opposition was rejected in part by EUIPO, the professional bodies brought an action before the General Court of the European Union. In its judgment, it annuls EUIPO’s decision and upholds the opposition, including as regards ‘wine complying with the specifications of [the PDO] “Champagne.”’ Accordingly, the application for registration of the trade mark NERO CHAMPAGNE is rejected.
The General Court in its decision T-239/23 notes, first of all, that EU law does not prohibit a trade mark from containing a PDO. However, its registration may be refused if the PDO does not comply with the product specification concerned, if its use exploits the reputation of a PDO or if the mark applied for conveys a false or misleading indication as to the provenance or origin of the product.
The General Court considers that there is a presumption that a trade mark containing a PDO and registered solely in respect of products complying with the specification of that PDO does not unfairly exploit the reputation of that PDO. However, such a presumption may be rebutted where it is shown that a trade mark is liable to exploit unduly the reputation of a PDO, even if it designates only products which comply with the product specification of that PDO. Thus, when evidence to that effect is brought to EUIPO’s attention, EUIPO must examine it in order to ascertain whether they allow that presumption to be rebutted.
Therefore, first, the Court finds that, despite EUIPO’s consistent practice to that effect, the Board of Appeal erred in law in finding, in essence, that that presumption cannot be called into question by any evidence.
Finally, the Court finds that the word ‘nero’ could be perceived by consumers as evoking either the champagne grape variety or its colour, with the result that the mark applied for could convey false or misleading information. The Court notes that that term is used in the name of several well-known Italian grape varieties and that multiple grapevine varieties include it in their names. Furthermore, the word ‘nero’ will be understood by the Italian-speaking public as meaning ‘black’ (and according to the Austrian Supreme Court also by the Austrian public). The public might therefore think that it is a ‘black champagne’, even though, under the specification of the PDO, a champagne can only be white or rosé.