On September 9, the Court of Justice issued a judgment in Case C-783/19, ruling on a preliminary ruling requested by the Provincial Court of Barcelona in connection with an action for infringement of the “Champagne” designation of origin brought by the Comité Interprofessionnel du Vin de Champagne (CIVC) against several tapas bars operating under the name “Champanillo.”
The Commercial Court of Barcelona had dismissed the case at first instance, ruling that there was no infringement of the designation of origin because the term “Champanillo” was not used to refer to an alcoholic beverage, but rather to hospitality services that were not comparable to Champagne wine.
When ruling on the appeal filed by the CIVC against this decision, the Provincial Court of Barcelona had some doubts regarding the interpretation of the applicable European Union regulation —Regulation No. 1308/2013—and decided to refer these doubts to the Court of Justice through a preliminary ruling.
The first of these questions concerned the possibility of protecting designations of origin, pursuant to Article 103(2) of that Regulation, against the use of designations that evoke a protected designation to identify services that are not comparable to the goods designated by the latter.
In accordance with the opinion expressed by the Advocate General, the Court has addressed this issue by stating that “the Regulation protects PDOs against conduct related to both goods and services.” In its view, the Regulation establishes “broad-ranging protection intended to cover all uses that constitute an unfair exploitation of the reputation enjoyed by products covered” by PDOs.
The Barcelona Regional Court also referred two questions to the Court of Justice regarding the criteria to be used in determining whether a designation of origin is“evoked,”within the meaning of the Union regulation. In particular, the questions focused on the relevance, for those purposes, of comparing the product protected by the PDO with the product or service designated by the disputed designation.
In this regard, the Court of Justice clarifies in its judgment that the existence of an evocative connection“on the one hand, does not require, as a prerequisite, that the product covered by a PDO and the product or service covered by the disputed sign be identical or similar; and, on the other hand, is established when the use of a designation gives rise, in the mind of an average European consumer who is reasonably well-informed and reasonably observant and circumspect, to a sufficiently direct and unambiguous link between that designation and the PDO.”
Based on these premises, it will be up to the Provincial Court of Barcelona to determine, in the case at hand and taking into account all the relevant circumstances, whether the use of the name CHAMPANILLO gives rise to that“sufficiently direct and unambiguous link”to champagne that establishes the existence of an evocative association.
Regardless of the decision the Spanish court ultimately reaches, the significance of this ruling lies in the fact that this is the first time the Court of Justice has explicitly ruled in favor of extending PDO protection to cases other than the use of similar designations to distinguish products of a similar nature to those designated by the designation of origin.
Furthermore, although this is not new compared to what the Supreme Court has stated in previous rulings, this ruling delves deeper into the distinction between the analysis of the concept of evocation and the existence of a similarity between the products distinguished by the PDO and those products or services to which the disputed designation applies. The Court thus highlights the distinction, for these purposes, between the criteria for comparison under trademark law.
Ultimately, recognizing the need to protect designations of origin from the exploitation of their reputation in various sectors—whether in relation to products or services—is essential for highly prestigious designations such as the Champagne designation. This ruling represents a significant step forward in that direction.
Author: Carlos Morán