The matter at hand

The British Instituto dos Vinhos do Douro e do Porto ('IVDP') filed for a declaration of invalidity against the registration of the word mark PORT CHARLOTTE, registered for whisky, claiming infringement of an earlier right to a sign of more than mere local significance within the meaning of Article 8(4) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark. In support of its application, IVDP relied on the geographical indications 'Porto' and 'Port', which are protected by Regulation No 1234/2007 (establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products) and by several provisions of Portuguese law.

Article 118m(2)(a) of Regulation No 1234/2007 protects geographical indications against any commercial use thereof (i) by comparable products not complying with the product specification of the protected name or (ii) in so far as such use exploits the reputation of a geographical indication. The relevant provisions of Portuguese law relied on by IVDP also protect geographical indications against the use thereof for products that are not identical or similar, if the relevant geographical indication has a reputation in Portugal or in the EU, whenever its use aims at, without due cause, exploiting or harming the distinctive character or reputation thereof.

The judgment of the ECJ

In the appeal before the ECJ, the parties first of all disagree on whether Regulation No 1234/2007 contains a uniform and exclusive system of protection, precluding the application of national provisions which grant additional protection (in this case the additional protection the Portuguese law  provides to geographical indications with a reputation).

In that regard, the ECJ holds that the principles laid down in its judgment in BudDjovicky Budvar (C-478/07), relating to the uniform and exclusive nature of the system of protection provided for by Regulation No 510/2006 (on the protection of geographical indications and designations of origin for agricultural products and foodstuffs), also apply to the Single CMO RegulationCouncil Regulation [EC] No 1234/2007 pf 22 October 2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products. Consequently, the protection conferred on geographical indications under that regulation may not be supplemented by national laws granting additional protection (paragraph 108).

As to whether the use of the mark PORT CHARLOTTE exploits the reputation of the geographical indications 'Porto' or 'Port' within the meaning of Article 118m(2)(a)(ii) of Regulation No 1234/2007, the ECJ holds that “[t]he incorporation in a trade mark of a name which is protected under Regulation No 1234/2007, such as the designation of origin ‘port’, cannot be held to be capable of exploiting the reputation of that designation of origin (…), if that incorporation does not lead the relevant public to associate that mark or the goods in respect of which it is registered with the designation of origin concerned or the wine product in respect of which it is protected” (paragraph 115). In this respect, the General Court found that the average consumer in the EU with at least a basic knowledge of English will understand the sign ‘PORT CHARLOTTE’ as designating a harbour named after a person called Charlotte, without making a direct link with the designation of origin ‘Porto’ or ‘Port’ or a port wine. On the basis of that factual assessment, the General Court was entitled to hold that the contested mark could not be regarded as using the designation of origin ‘Porto’ or ‘Port’ (paragraph 117).

The ECJ also rejects IVDP’s argument that General Court erred in law by finding that for the reasons summarized above, there cannot be ‘evocation’ within the meaning of Article 118m(2)(b) either. In this regard, the ECJ refers to its decision in Viiniverla (C-75/15), from which it follows that the “concept of ‘evocation’ covers a situation in which the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product the image triggered in his mind is that of the product whose designation is protected” (paragraph 122) and that “what matters is, in particular, that an association of ideas regarding the origin of the products is not created in the mind of the public” (paragraph 123). Therefore, the General Court did not err in law by holding that, even though the term ‘port’ forms an integral part of the contested mark, there was no ‘evocation’, because the average consumer will not associate whisky bearing the mark ‘PORT CHARLOTTE’ with a port wine (paragraph 124).