Infringement of the “Côtes du Rhône” and “Côtes du Rhône Villages” PDOs

Infringement of the Protected Designation of Origin (PDO) “Côtes du Rhône” and “Côtes du Rhône Villages“: Cancellation of the word and semi-figurative trademarks NEWRHONE evocative of the PDO.

In 2018, SAS NEWRHONE MILLESIMES obtained registration of the NEWRHONE and trademarks with the INPI to identify “wines benefiting from the Protected Designations of Origin “Côtes du Rhône” and “Côtes du Rhône Villages” including Côtes du Rhône Crus, and other Protected Designations of Origin of the Rhône Valley” in class 33.

The INAO (Institut National de l’Origine et de la Qualité) and the Syndicat général des vignerons réunis des côtes du Rhône contested these registrations and and requested the cancellation of these trademarks before the Judicial Court of Paris in 2018 for infringement of the PDO “côtes du Rhône” and “côtes du Rhône villages“.

The Judicial Court dismissed their claims on 16 April 2021, ruling that the trademarks did not refer to the PDOs in question, and an appeal was lodged.

The Paris Court of Appeal overturned the judgment, ruling on 26 May 2023 that the claims of the INAO and the Syndicat général des vignerons réunis des côtes du Rhône were well-founded, and that the NEWRHONE and trademarks made up of the dominant PDO term RHONE would be perceived as declensions of the PDO, evoking in the mind of the reference European consumer the PDOs protecting wines meeting the specific provisions set out in the specifications and benefiting from the PDOs.

Relying on previous CJEU rulings, the Court of Appeal validated the infringement by evoking the PDO, which leads consumers to think of the product benefiting from the PDO. The Court thus considers that consumers will establish a direct and unambiguous link between the contested trademark and the PDO.

This ruling validates the broad protection offered to PDOs, which are signs set up to protect consumers. The Protected Designation of Origin (PDO) is a European sign that designates a “product all the stages of production of which are carried out according to a recognized know-how in the same geographical area, which gives the product its characteristics“.

It is interesting to note that since the dispute launched in 2018, French legislation has evolved and now allows PDO defenders to assert the PDO against a new trademark application directly with the INPI in opposition proceedings or in cancellation proceedings against a registered trademark.

There is no doubt that this analysis of the infringement of the PDO, validated by the Paris Court of Appeal, will be followed by the INPI in future decisions. It is a reminder to be vigilant when studying the feasibility and availability of a proposed trademark for agricultural, food or wine products, with regard to a possible evocation or link established by the consumer between the trademark and the PDO.

– Eléonore DAUPHANT, Intellectual Property Attorney and Partner at Mark & Law

Sources:

• PIBD 1210-III-5
• Paris Court of Appeal, pôle 5, 2e ch., 26 May 2023, 21/09232 (M20230066)
• INAO website