EUIPO Board of Appeal: protection of wine PDOs against evocation.

On May 30, 2024, the Fifth Board of Appeal of the EUIPO issued an important decision (R 1454/2022-5) concerning the protection of wine Protected Designations of Origin (PDOs) against evocation.

This decision confirms the cancellation of the European Union trademark "PriSecco" for non-alcoholic cocktails, on the grounds that it evoked the PDO "Prosecco".

I. Background of the case.

The German company Manufaktur Jörg Geiger GmbH obtained in 2015 the registration of the word mark "PriSecco" for "cocktails, non-alcoholic" in class 32.

In 2020, the Consorzio di Tutela della Denominazione di Origine Controllata "Prosecco" requested the invalidation of this mark, notably invoking an **evocation** of the "Prosecco" PDO within the meaning of Article 103(2)(b) of Regulation (EU) No 1308/2013 on the common organisation of the markets in agricultural products (the wine CMO Regulation).

After a first instance decision of cancellation, the Board of Appeal confirmed the invalidity of the mark, despite a partial disclaimer by the owner limiting the products to " _non-alcoholic cocktails whose ingredients are apple and/or pear juices made from meadow fruit varieties_ ".

II. Main contributions of the decision.

The Board recalls that the notion of evocation within the meaning of Article 103(2)(b) of the wine CMO Regulation must be interpreted broadly.

- Evocation can exist even in the absence of any likelihood of confusion - It is not necessary for the products to be identical or similar - The intention of the owner of the contested mark is not required, evocation being assessed objectively.

This approach is consistent with the case law of the CJEU, notably the "Champanillo" judgment (C-783/19) which extended the protection of PDOs to restaurant services.

The Board recalls that evocation is assessed with regard to the average European consumer, who is reasonably well informed and reasonably observant.

It must be characterized by " _a sufficiently direct and unequivocal link_ " between the contested sign and the PDO concerned.

In this case, the Board found:

- A very strong visual and phonetic similarity between "PriSecco" and "Prosecco" - The absence of relevant conceptual difference - A notable proximity between wines and non-alcoholic cocktails, particularly in terms of consumption and distribution context.

The Board concluded that there is

" _a strong risk that, for a substantial part of European consumers, when confronted with the sign "PriSecco" for the non-alcoholic cocktails in question, the image that comes directly to mind is that of the product protected by the PDO "Prosecco_ ".

III. Scope of the decision.

This decision is part of a jurisprudential trend reinforcing the protection of wine PDOs at European level.

The protection offered to these PDOs is indeed particularly extensive compared to traditional trademarks.

This decision reiterates the crucial importance for companies to take into account the protection of wine PDOs in their overall intellectual property strategy, even when operating in sectors seemingly far removed from the products benefiting from these appellations.

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