On September 9, the Court of Justice handed down a ruling in the Case C-783/19, resolving a preliminary question raised by the Provincial Court of Barcelona in the context of an action for infringement of the Champagne designation of origin initiated by the Champagne Interprofessional Wine Committee (CIVC) against some tapas bars distinguished with the name “Campanillo” .
The Commercial Court of Barcelona had dismissed the action in the first instance, considering that there was no infringement of the designation of origin because the term “Champanillo” was not used to designate an alcoholic beverage, but rather hospitality services that were not comparable to wine. Champagne.
When resolving the appeal filed by the CIVC against this resolution, some doubts were raised at the Provincial Court of Barcelona regarding the interpretation of the European Union regulation applicable to the case - the Regulation No. 1308/2013– which he decided to ask the Court of Justice through the preliminary ruling question.
The first of these doubts referred to the possibility of protecting appellations of origin, in accordance with art. 103.2 of said Regulation, against the use of names that evoke a protected name to identify services not comparable to the products designated by the latter.
Following the opinion expressed by the Advocate General, the Court has responded to this question by stating that “The Regulation protects PDOs against behavior related to both products and services”. In his opinion, the Regulation establishes “a wide-ranging protection that is intended to be extended to all uses that involve unfair use of the reputation enjoyed by the covered products” by the PDOs.
The Barcelona Court also raised two questions with the Court of Justice regarding the criteria that must be used to examine the existence of a “evocation” of a designation of origin, within the meaning of the Union rule. In particular, the issues focused on the relevance for these purposes of the comparison between the product protected by the PDO and the product or service designated by the disputed name.
In this regard, the Court of Justice clarifies in its ruling that the existence of evocation “On the one hand, it does not require, as a prerequisite, that the product covered by a PDO and the product or service covered by the contested sign be identical or similar and, on the other hand, it is proven when the use of a name gives rise to, in the mind of an average European consumer, normally informed and reasonably attentive and discerning, a sufficiently direct and univocal link between that denomination and the PDO."
Starting from these premises, it will be up to the Provincial Court of Barcelona to assess in the case prosecuted, taking into account all the circumstances present in it, whether the use of the name CHAMPANILLO gives rise to that “sufficiently direct and univocal link” with the champagne that determines the existence of the evocation.
Beyond the decision taken at the time by the Spanish court, the relevance of this ruling lies in the fact that It is the first occasion on which the Court of Justice has explicitly ruled in favor of the extension of the protection of PDOs to cases other than the use of similar names to distinguish products of a nature analogous to those designated by the designation of origin..
On the other hand, although it is not a novelty with respect to what was declared by the CJ in other previous rulings, it delves into the disconnection of the analysis from the concept of evocation of the existence of a similarity between the products distinguished by the PDO and those products or services to which the contested name applies. The differentiation for these purposes of the comparison criteria of trademark law is thus made evident by the Court.
Ultimately, The recognition of the need to protect designations of origin against the use of their reputation in various sectors, both in relation to products and services, is fundamental for high-prestige designations such as the Champagne designation. This ruling constitutes an important step forward in that direction.
Author Carlos Moran
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