“Port Charlotte” Decision: How Member States’ national GIs affect Community Trademark Registration
Among the controversial issues in matter of geographical indications, the coexistence between EU Member States’ national laws and the EU regulations has always resulted particularly sensitive.
In this regard, Judgement of the General Court of 18 November 2015, T-659/14 “Instituto dos Vinhos do Douro e do Porto”, set forth an interesting and important interpretation of the rules concerning Geographical Indications (GIs).
Hereinafter you will find a brief summary on the most relevant facts of this judgment:
On October 27 of 2006, the Scotch Company, Bruichladdich Distillery Co. Srl, applied for the registration of a Community Trademark before the Office of Harmonization in the Internal Market. The trademark at issue is PORT CHARLOTTE, seeking protection for “alcoholic beverages” in class 33 of the International Classification. This trademark was eventually registered on October 18, 2007 under number 5 421 474.
On April 7, 2011 the Instituto dos Vinhos do Douro e do Porto, IP, filed an application for invalidity of the “PORT CHARLOTTE” trademark before the OHIM. Amongst the invalidity grounds provided in such application, the Instituto dos Vinhos do Douro e do Porto invoked “Porto” and “Port”, protected under both the Portuguese and the EU relevant legislations. In reply to this invalidity application, Bruichladdich Distillery Co. Srl limited the list of products for which “PORT CHARLOTTE” trademark was registered to “Whisky”.
On February 2 of 2010, the Cancellation Division rejected the application for invalidity, therefore the Instituto dos Vinhos do Douro e do Porto filed an appeal before the Board of Appeal of the OHIM, pursuant to articles 58 and 64 of Regulation 207/2009. Such appeal was newly rejected. Among the cancellation grounds, the Board of Appeal alleged that the geographical indications “Porto” and “Port” are exclusively protected for wines, which is a different product from whisky, as designated by “PORT CHARLOTTE” trademark.
Likewise, it was considered that it is not possible to stablish a link between the sign “PORT CHARLOTTE”, comprised of a geographical place and a name, and the geographical indications “Oporto” or “Porto” that is the abbreviated way used in the labels of the bottle to designate the type of wine protected under such geographical indication.
Lastly, and among other reasons, the Board of Appeal understood that the consumer cannot be misled about the origin of the products designated under the “PORT CHARLOTTE” trademark, provided that it is easily recognizable that whisky is a product with very different features when compared to Oporto wines.
In this scenario, the Instituto dos Vinhos do Douro e do Porto lodged an appeal before the General Court on the basis of the same grounds relied on before the Board of Appeal, among others, the following:
- Challenges the statement by means of which the name of Portuguese city called Porto is Oporto, not Porto.
- Reproaches the Board of Appeal not having considered that the terms “porto” and “port” were protected under the Portuguese Law as origin denominations and that they are geographical indications in compliance with Regulation 491/2009.
- Also reproaches the Board of Appeal having wrongly upheld the fact that the protection of wine origin denominations was exclusively governed by the Regulation 491/2009, without considering also the national law.
- Moreover, it is alleged by the claimant that the contested decision infringes article 53.1 c) of Regulation 207/2009 as the origin denominations consisting of “Porto” and “Port” entitle its owner the right to oppose to the use of the earliest trademark by virtue of both Portuguese Law and EU Law as well.
Among all the arguments pointed out by the General Court, its interpretation of Community rules is of special interest, in particular, whether the EU legislation is to be understood as comprehensive or not. Therefore there is no room for doubt when the General Court states that:
“… it cannot be drawn either from the provisions of Regulation 491/2009 or from Regulation 207/2009 the fact that the protection by virtue of Regulation 491/2009 must be understood as comprehensive, in the sense that it cannot be completed, outside its own scope of application, by any other protection regime. On the contrary, considering the unambiguous wording of article 53, section 1, letter c), of Regulation 207/2009 in relation with its article 8, section 4, and the wording of article 53, section 2, letter d) of this same Regulation, it follows that the invalidity causes can be based alternatively or accumulatively, on prior rights in accordance with the [Community] regulation or the national law that rules the protection of these rights”. Thereupon, the protection granted to the origin denominations and to the (protected) geographical indications by virtue of Regulation 491/2009, provided that these constitute “prior rights” in the sense of the provision aforementioned of Regulation 207/2009, can be completed by the corresponding national law that grants an additional protection.”
On the basis of the above, the General Court established that in order to establish if a sign protected in a Member State grants the right to impede the use of an earlier trademark, it must be considered in the light of the applicable national law. In this connection, it must be taken into account the national regulation and case law. On this basis, the opponent of a trademark application will have to prove that the sign at stake falls within the scope of application of the law of the invoked Member State.
This is a groundbreaking decision in that it contravened the OHIM’s settled case-law according to which the Community regulation on wines and spirits established a uniform and comprehensive protection system preventing that the EU Member States’ national regulations on GIs cannot be invoked against an application for trademark registration. This decision of the General Court declares otherwise and we are sure that it will set a precedent for future decisions issued by the OHIM on this matter.
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