Everything that sparkles is not “Champagne”: a story of Protected Designation of Origin

Last September, in a case involving bubbly drinks, the European courts once again reinforced the protection afforded to products covered by a Protected Designation of Origin (PDO). 

But first of all, what is an Designation of Origin? 

This term is defined as the name of a region or a specific place that is used to designate a product that meets certain requirements, in particular its quality and characteristics that are essentially/exclusively due to a particular geographical environment and the natural and human factors inherent to it. This designation is protected against any use that would aim to profit from the reputation associated with products meeting these requirements. 

The present case concerned the company GB, which owned tapas bars in Spain and used the sign “Champanillo” (which means “small champagne” in Spanish) to designate and promote them on social networks in association with a support representing two cups filled with a sparkling drink that clink. Considering that the use of the sign “Champanillo” constitutes an infringement of the PDO, the Comité interprofessionnel du vin de Champagne (CIVC) filed action before the Commercial Court of Barcelona to obtain the cessation of the use of “Champanillo” and the deletion of the domain name <champanillo.es>. GB, contesting these claims, referred questions to the Court of Justice of the European Union (CJEU) for a preliminary ruling.  

This new decision of the CJEU clarifies the scope of protection of PDOs. First, it states that a PDO is protected against any usurpation, imitation or evocation, even if the true origin of the product or service is indicated. At the same time, it recalls the intention of the legislator when drafting the regulation, which was to protect PDOs against any use made by products or services not covered by this protection. 

The Court also framed the notion of “evocation” in this judgment. First, it is not necessary that the product benefiting from a PDO and the product or service covered by the contested sign be identical or similar; it is only necessary that the use of the name produces in the mind of the average European consumer (normally informed and reasonably attentive and circumspect) a sufficiently direct and unambiguous link between the name and the PDO. The partial inclusion of the PDO in the litigious sign, a phonetic and visual similarity between the two signs, a conceptual proximity between the PDO and the litigious name, or a similarity between the products covered by the two signs may be sufficient. The referring court must therefore take into consideration all the relevant elements surrounding the use of the name at issue in order to determine whether or not there is an evocation. 

In addition, the CJEU now establishes that the PDO protection system is an objective system that does not require proof of intent or fault or of a competitive relationship between the goods protected by the PDO and the goods or services for which the contested sign is used, or even the presence of a likelihood of confusion for the consumer. In short, the protection of PDOs is completely independent of the existence of an act of unfair competition.   

This decision has pleased the members of the CIVC, as battles of this kind are incessant for the defenders of the PDO “Champagne“. Although this case will only be definitively settled once the Spanish judge has ruled on the question of whether “Champanillo” infringes on this PDO, it reinforces the privileged position that PDOs enjoy on the European and international scene. 

− Isabella MOUSTIQUE, IP Legal Intern at Mark & Law

Sources:

• CJEU decision of September 9, 2021, Comité Interprofessionnel du Vin de Champagne v/ GB, C-783/19
• CJEU decision of May 2, 2019, Fundación Consejo Regulador Denominación de Origen Protegida Queso Manchego, C-614/17