Comité interprofessionnel du vin de Champagne
and
Institut national de l’origine et de la qualité (INAO)
v
European Intellectual Property Office (EUIPO)
Judgment of the General Court (Eighth Chamber, Extended Composition) of 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)
Agriculture – Uniform legislation – Protection of geographical indications and designations of origin for agricultural products and foodstuffs – Regulation No 1308/2013 – Trade mark that contains or consists of a protected designation of origin – Obstacle to registration of such a mark – None
(European Parliament and Council Regulation No 1308/2013, Arts 102(1) and 103(2))
(see paragraphs 31-34)
Agriculture – Common organisation of the markets – Wine – Designation and presentation of wines – Protected designations of origin and protected geographical indications – Exploitation of the reputation of a protected designation of origin – Related products and services complying with the specification of the protected designation of origin – Non-rebuttable presumption that the reputation of that designation was not exploited – Not included
(European Parliament and Council Regulation No 1308/2013, Art. 103(2)(a)(ii))
(see paragraphs 47-52, 58-60, 64-66, 69)
Agriculture – Common organisation of the markets – Wine – Designation and presentation of wines – Protected designations of origin and protected geographical indications – Exploitation of the reputation of a protected designation of origin – Concept – Use of a protected designation of origin that seeks to take undue advantage of the reputation enjoyed by that designation of origin
(European Parliament and Council Regulation No 1308/2013, Art. 103(2)(a)(ii))
(see paragraph 52)
Agriculture – Common organisation of the markets – Wine – Designation and presentation of wines – Protected designations of origin and protected geographical indications – Protection against false or misleading indications – Scope
(European Parliament and Council Regulation No 1308/2013, Art. 103(2)(c))
(see paragraph 75)
EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade – Geographical indications and designations of origin – Word mark NERO CHAMPAGNE – Protected designation of origin
(European Parliament and Council Regulations No 1308/2013, Art. 103(2)(a) and (c), and 2017/1001, Art. 8(6))
(see paragraphs 80-84)
Résumé
By its judgment, the General Court rules, first, on Article 103(2)(a)(ii) of Regulation No 1308/2013, (
1) concerning the unprecedented issue of the possible exploitation of the reputation of a protected designation of origin (PDO) when a trade mark that contains that PDO limits its registration to products complying with the specification of the PDO at issue and to services referring to such products and, secondly, on Article 103(2)(c) of Regulation No 1308/2013 as to the possibility that a trade mark that contains a PDO may convey false or misleading indication.
On 19 February 2019, Nero Lifestyle Srl, filed with the European Union Intellectual Property Office (EUIPO) an application for registration of the word sign NERO CHAMPAGNE as an EU trade mark in respect of various products and services. (
2) Several months later, on 2 August 2019, the Comité interprofessionnel du vin de Champagne and the Institut national de l’origine et de la qualité (INAO), the applicants, filed a notice of opposition to registration of the mark applied for based on the PDO ‘Champagne’, registered in the European Union for wine since 18 September 1973.
The Opposition Division of EUIPO partially upheld the opposition on the basis of Article 103(2)(c) of Regulation No 1308/2013 in respect of some services and rejected the opposition in respect of the other goods and services.
By decision of 17 February 2023 (‘the contested decision’), the Board of Appeal of EUIPO, upon hearing the applicants’ appeal, partially annulled the Opposition Division’s decision in so far as it had rejected the opposition in respect of the some services and, consequently, upheld the opposition in respect of those services. However, it rejected the opposition in respect of the other goods and services relating to products complying with the specification of the PDO ‘Champagne’.
It is in that context that the General Court heard an application for annulment and alteration of the Board of Appeal’s decision in so far as it had rejected the opposition.
Findings of the Court
In the first place, the Court notes that Article 102(1) of Regulation No 1308/2013 does not prohibit, as a matter of principle, a trade mark from containing or consisting of a PDO. Registration of such a mark is to be refused or invalidated only in two situations, namely, if the PDO does not comply with the product specification concerned, or if its use falls under Article 103(2) of that regulation. The latter article provides an exhaustive list of practices against which PDOs are protected. In particular, Article 103(2)(a)(ii) is intended to protect PDOs against any direct or indirect commercial use thereof in so far as that use exploits the reputation of the PDO.
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 set out above.
3) that the Board of Appeal applied in the contested decision. According to that theory, 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.
However, the Court points out that the contested decision lacks clarity in its application of that ‘limitation theory’, particularly as regards the nature of the presumption that the reputation of the PDO was not exploited. The Court therefore structures its reasoning around two possible scenarios: first, that it is a non-rebuttable presumption and, secondly, that it is a rebuttable one.
As regards the first possibility, the Court notes that the Board of Appeal found that Article 103(2) of Regulation No 1308/2013 did not apply since the mark applied for covered products that were in conformity with the specification of the PDO and services relating to such products. However, the situations listed in Article 103(2) of that regulation do not cover products which do not comply with the specification. Article 103(2)(a)(ii) does not specify that it applies only to the use of the PDO in question for comparable products or for goods and services not complying with the specification of that PDO. Thus, nothing in the wording of Article 103(2)(a)(ii) and (b) to (d) of that regulation 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.
Accordingly, the Court finds that 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. In that regard, the Board of Appeal should have carried out an analysis in order to assess whether the mark applied for exploited the reputation of that PDO, namely whether the use of that PDO sought to take undue advantage of its reputation.
Therefore, the Court finds that the Board of Appeal, by introducing a non-rebuttable presumption, made an error of law in the interpretation of Article 103(2)(a)(ii) of Regulation No 1308/2013.
As regards the possibility that the presumption that the reputation of the PDO was not exploited is rebuttable, the Court notes that 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. However, that 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. It is then for the adjudicating bodies of EUIPO to ascertain whether such elements allow that presumption to be rebutted.
Consequently, the Court states that, to the extent that the contested decision is interpreted as introducing a rebuttable presumption, it is not tainted by an error of law. However, 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.
The Court notes 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, in particular, the outstanding reputation of the PDO ‘Champagne’, 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, and, moreover, the arguments relating to the labelling of the goods marketed by Nero Lifestyle.
Thus, the Court finds that, by failing to sufficiently explain how the elements produced were not capable of overturning the presumption in the present case, the Board of Appeal failed to fulfil its obligation to state reasons.
Therefore, the Court annuls the Board of Appeal’s decision in so far as the latter dismissed the appeal brought before it.
In the last place, the Court examines whether the mark applied for, which contains the PDO ‘Champagne’ in its name, can be perceived as conveying a false or misleading indication within the meaning of Article 103(2)(c) of Regulation No 1308/2013. (
4) First, it points out that the word ‘nero’ is used in the name of several well-known Italian grape varieties and in the name of multiple grapevine varieties. Consequently, the relevant public could be misled into thinking that the mark applied for evokes the grape variety of the champagne in question.
Secondly, the word ‘nero’ will be understood by the relevant Italian-speaking public as meaning ‘black’. 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.
Accordingly, the Court finds that 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.
Thus, the Court exercises its power of alteration and upholds the opposition in respect of the goods and services at issue, including ‘Wine complying with the specifications of the [PDO] “Champagne”’ included in Class 33.
1) 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 ).
2) More specifically, it 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.
3) 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 those guidelines, ‘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.’
4) Article 103(2)(c) of Regulation No 1308/2013 is intended to protect PDOs and protected geographical indications (IGP) against ‘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’.
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