On September 9, 2021, the Court of Justice of the European Union (“CJEU”) delivered its judgment in case C-783/19, involving a dispute between a sign and the Protected Designation of Origin (PDO) “Champagne.” The CJEU examines the applicable regulations to determine the scope of PDOs and establishes the criteria to define and interpret the concept of “evocation.”
Background
The Comité Interprofessionnel du Vin de Champagne (CIVC) brought an action against restaurant company GB, seeking that a Barcelona commercial court prohibit the use of the sign “CHAMPANILLO,” remove it and cancel domain name “champanillo.es.” GB uses this sign by an image of two glasses with sparkling beverage coming together in a toast. CIVC’s actions are based on an infringement of the PDO “Champagne.”
The first instance court dismissed the claim arguing that the sign “CHAMPANILLO” was not an evocation of the PDO “Champagne,” since it did not designate an alcoholic beverage but rather catering premises that did not sell champagne.
The CIVC appealed, and the Barcelona Provincial Court referred four questions to the Court of Justice of the European Union (“CJEU”) for a preliminary ruling. See below an analysis of these questions.
Questions for a preliminary ruling and the CJEU’s stance
> First: Do regulations protect PDOs only against similar products or also against services connected with the direct or indirect distribution of those products?
After examining the wording and purposes of the applicable regulations, the CJEU concludes that PDO protection should be broadly interpreted, i.e., as covering conducts regarding both products and services. Otherwise, argues the CJEU, third party service providers could unduly profit from the reputation of products covered by PDOs.
> Second and third: Does the concept of evocation require that the products covered by the PDO and the products or services for which the disputed sign is used be identical or similar? Should evocation be assessed relying on objective aspects to determine whether it affects the average consumer, or should the assessment be based on the evoking and evoked products and services for determining the risk of evocation.
To the second question the CJEU responds that the concept of evocation does not require as a precondition that the products covered by the PDO and the products or services for which the disputed sign is used be identical or similar.
Regarding the third question, the CJEU states that the essential element in determining whether there is an evocation is whether an average European consumer establishes a sufficiently clear and direct link between the term used to designate the relevant product and the PDO. Considering all the elements characterizing the PDO “Champagne,” the Barcelona Provincial Court (or the competent national court) will (i) have to assess whether the term “CHAMPANILLO” can create a sufficiently clear and direct link with champagne in an average European consumer’s mind; and (ii) subsequently determine whether there is an evocation.
Relying on precedents on evocation like the ones discussed in this and this blog entries, the CJEU mentions, e.g., that the sign used to designate products could include part of a PDO, thus triggering an image in the consumers’ minds that could lead them to think that the product is covered by the PDO. The CJEU also mentions cases in which, regarding products with similar appearance, there is a phonetic and visual relationship between the PDO and the disputed sign.
However, the CJEU emphasizes that these two criteria are not essential to find an evocation. In absence of these criteria, courts could consider the “conceptual proximity” between the PDO and the disputed sign, or even the similarity between the products covered by that PDO and the products and services for which the disputed sign is used.
Consequently, although the CJEU does not expressly state this, there is no exhaustive list of objective requirements that must be fulfilled to find an evocation. In contrast, courts must perform an overall assessment of all the elements that are present in each case.
> Fourth: Is evocation necessarily connected to the existence of unfair competition?
It is not, according to the CJEU. The protection under PDO regulations is objective and does not require proof of intent or fault. This protection does not require that the products covered by the PDO and those for which the sign is used be in competition or that consumers be at risk of confusing these products or services.
Having clarified these four questions, the Barcelona Provincial Court must now assess the CJEU’s responses and determine whether there is a PDO infringement in the “CHAMPANILLO” case. We will keep an eye on new developments in the case and on the Provincial Court’s final decision.