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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> IVDP v EUIPO - Vinoquel- Vinhos Oscar Quevedo (Quevedo Port) (U trade mark - Judgment) [2025] EUECJ T-23/24 (26 February 2025) URL: http://www.bailii.org/eu/cases/EUECJ/2025/T2324.html Cite as: EU:T:2025:182, [2025] EUECJ T-23/24, ECLI:EU:T:2025:182 |
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JUDGMENT OF THE GENERAL COURT (Second Chamber)
26 February 2025 (*)
( EU trade mark - Opposition proceedings - Application for the EU word mark Quevedo Port - Earlier PDO ‘Porto/Port’ - Relative ground for refusal - Article 8(6) of Regulation (EU) 2017/1001 - Article 103(2)(a)(ii) and (b) of Regulation (EU) No 1308/2013 - Concepts of ‘use’ and ‘evocation’ of a PDO )
In Case T‑23/24,
Instituto dos Vinhos do Douro e do Porto, IP (IVDP), established in Peso da Régua (Portugal), represented by P. Sousa e Silva, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Vinoquel- Vinhos Oscar Quevedo, Lda., established in São João da Pesqueira (Portugal),
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, W. Valasidis and L. Spangsberg Grønfeldt (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Instituto dos Vinhos do Douro e do Porto, IP (IVDP), seeks annulment and alteration of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 November 2023 (Case R 2471/2022-4) (‘the contested decision’).
Background to the dispute
2 On 26 April 2021 EUIPO, the other party to the proceedings before the Board of Appeal of EUIPO, Vinoquel- Vinhos Oscar Quevedo, Lda., filed an application for registration of an EU trade mark with EUIPO for the word sign Quevedo Port.
3 The mark applied for designated the products in Classes 29 and 33 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 29: ‘Olive oils’;
– Class 33: ‘Wine complying with the specifications of the protected designation of origin “Porto / Port / vinho do Porto / Port Wine / vin de Porto / Oporto / Portvin / Portwein / Portwijn”’.
4 On 1 September 2021, the applicant filed a notice of opposition to registration of the mark applied for in respect of the good included in Class 29.
5 The opposition was based on protected designation of origin (PDO) No PDO-PT-A 1540 for the name ‘Porto’ or ‘Port’, registered in the European Union for wine since 24 December 1991, in accordance with Regulation (EU) No 1308/2013 of the European Parliament and of the Council of 17 December 2013 establishing a common organisation of the markets in agricultural products and repealing Council Regulations (EEC) No 922/72, (EEC) No 234/79, (EC) No 1037/2001 and (EC) No 1234/2007 (OJ 2013 L 347, p. 671) (‘the earlier PDO’).
6 The grounds relied on in support of the opposition were those set out in Article 8(6) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7 On 9 December 2022, the Opposition Division rejected the opposition.
8 On 13 December 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 By the contested decision, the Board of Appeal dismissed the appeal. It found, first, that the similarities between the signs at issue were not sufficient to constitute a direct or indirect commercial use for the purposes of Article 103(2)(a)(ii) of Regulation No 1308/2013, and, secondly, that the conditions set out by Article 8(6) of Regulation 2017/1001, read in conjunction with Article 103(2)(b) of Regulation No 1308/2013 were not met on the ground that, in the light of, inter alia, the difference between the products concerned, it was unlikely that the contested sign evoked the earlier PDO.
Forms of order sought
10 The applicant claims that the Court should:
– annul and alter the contested decision in order to reject the application for registration of the mark applied for in so far as it designates the product ‘Olive oils’ in Class 29;
– order EUIPO to pay the costs, including those incurred before the Opposition Division and the Board of Appeal.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that an oral hearing is convened.
Law
12 The applicant raises, in essence, two pleas in law, alleging, first, infringement of Article 103(2)(a)(ii) of Regulation No 1308/2013 and, secondly, infringement of Article 103(2)(b) of that regulation, both provisions read in conjunction with Article 8(6) of Regulation 2017/1001.
13 EUIPO disputes those arguments and claims, in particular, that several annexes to the application were not submitted during the proceedings before the Board of Appeal. Accordingly, it argues, three excerpts from books by a British writer submitted in order to prove that the word ‘port’ is used to designate wine from Porto (Portugal) (‘port wine’); ten reproductions of port wine bottles submitted to prove that Portuguese consumers are accustomed to brands of wine which use the name of the earlier PDO; six decisions adopted by Portuguese authorities and courts between 2012 and 2019, submitted to prove that applications for marks for olive oil containing the words ‘porto’ or ‘port’ are rejected in Portugal; documents concerning the other party to the proceedings before the Board of Appeal submitted to prove its intention to use the same sign for wine and olive oil; and an extract from an article stating that olive oil, bread and wine are the basic ingredients of Mediterranean cuisine, must be declared inadmissible.
14 As a preliminary point, it should be noted that it is apparent from the contested decision, first, that the wine protected by the earlier PDO is very well-known and associated with the image of prestige, high quality and traditional products fulfilling strict requirements and quality standards, and, secondly, that the olive oil designated by the contested sign and the wine protected by the earlier PDO are not comparable products.
15 Those assessments are not disputed and there is no need to call them into question.
16 It is also necessary to observe that according to Article 8(6) of Regulation 2017/1001, upon opposition by any person who, like the applicant, is authorised under the relevant law to exercise the rights arising from a designation of origin, the trade mark applied for is not to be registered where and to the extent that, pursuant to the EU legislation or national law providing for the protection of designations of origin:
– an application for a designation of origin had already been submitted, in accordance with EU legislation or national law, prior to the date of application for registration of the EU trade mark or the date of the priority claimed for the application, subject to its subsequent registration;
– that designation of origin confers the right to prohibit the use of a subsequent trade mark.
17 PDOs which, like the earlier PDO, concern wines are governed by Regulation No 1308/2013.
18 Under Article 102(1)(a) of Regulation No 1308/2013, the registration of a trade mark that contains or consists of a PDO concerning a wine listed in annex to that regulation and which does not comply with the product specification concerned or the use of which falls under Article 103(2) of that regulation is to be refused if the application for registration of the trade mark is submitted after the date of submission of the application for protection of the designation of origin to the European Commission and the designation of origin is subsequently protected.
19 In that regard, it must be observed that Article 103(2) of Regulation No 1308/2013 contains a graduated list of prohibited conduct, which is based on the nature of that conduct. Thus, the scope of Article 103(2)(a) of Regulation No 1308/2013 must necessarily be distinguished from that of Article 103(2)(b) thereof (see judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 36 and the case-law cited).
20 The latter provisions are drafted as follows:
‘2. A protected designation of origin …, as well as the wine using that protected name in conformity with the product specifications, shall be protected against:
(a) any direct or indirect commercial use of that protected name:
(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 designation of origin …;
(b) any … evocation, even if the true origin of the product or service is indicated or if the protected name is translated, transcripted or transliterated or accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation”, “flavour”, “like” or similar; …’
21 In assessing a potential conflict with a PDO, it is appropriate to refer to the perception of an average consumer who is reasonably well informed and reasonably observant and circumspect, that concept being understood as covering European consumers and not only consumers of the Member State in which the product giving rise to the use or evocation of the PDO is manufactured (see, to that effect, judgment of 7 June 2018, Scotch Whisky Association, C‑44/17, EU:C:2018:415, paragraph 47 and the case-law cited).
22 However, in so far as the legislation at issue in the present case protects designations of origin throughout the territory of the European Union, the concept of the average European consumer who is reasonably well informed and reasonably observant and circumspect must be interpreted in a way that guarantees effective and uniform protection of registered names throughout the territory of the European Union. Accordingly, a conflict assessed by reference to the consumers of a single Member State is sufficient to trigger the protection provided for by the EU regulations (judgment of 2 May 2019, Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego, C‑614/17, EU:C:2019:344, paragraphs 47 and 48).
23 That is the context in which the arguments of the parties must be assessed.
The first plea in law, alleging infringement of Article 103(2)(a)(ii) of Regulation No 1308/2013
24 The applicant claims, first, that the degree of similarity between the signs at issue is sufficient for the use of the contested sign to be classified as a direct or indirect commercial use for the purposes of Article 103(2)(a)(ii) of Regulation No 1308/2013, and, secondly, that the use of the contested sign to designate olive oil would result in the exploitation of the reputation of the earlier PDO.
The first complaint, alleging incorrect assessment of the degree of similarity between the signs when ascertaining the existence of a commercial use of the name protected by the earlier PDO
25 The applicant is of the opinion that the Board of Appeal erred in finding that the degree of similarity between the signs at issue was not sufficient for the use of the contested sign to be regarded as a direct or indirect commercial use of the earlier PDO for the purposes of Article 103(2)(a)(ii) of Regulation No 1308/2013. First, in its view, the full reproduction of the name ‘Port’ of the earlier PDO in the contested sign constitutes a commercial use. Secondly, the signs are visually and phonetically similar to a particularly high degree. Thirdly, conceptually, it is incorrect to find that the element ‘port’ of the contested sign could mean ‘harbour’, in the sense of the location by the sea or a river, or have no meaning.
26 For an English-speaking consumer, the word ‘port’ also means ‘port wine’ (see The Oxford Advanced Learner’s Dictionary, 7th Edition, p. 1170). That meaning, it argues, is frequently used in English literature and is all the more relevant because the wine protected by the earlier PDO is very well-known. Furthermore, it is quite common for brands of port wine, both within the European Union and in Portugal, to combine surnames with the word ‘port’ in second position.
27 Similarly, in its view, Portuguese-speaking consumers, who are familiar with the English language and the use of the word ‘port’ to designate wine, are used to seeing bottles of port wine labelled with marks consisting of a surname followed by ‘port’. It is therefore highly likely that those consumers will establish a close connection with the name of the earlier PDO. They will read the word ‘port’ as an element distinct and separable from the name ‘quevedo’ and will perceive it as a logical and conceptual unit relating to the earlier PDO.
28 EUIPO disputes the applicant’s arguments.
29 It should be recalled, first of all, that the scope of the protection afforded by Article 103(2)(a) of Regulation No 1308/2013 is particularly broad, in that those provisions are directed at any direct or indirect commercial use of a PDO and protect them against such use, both as regards comparable products which do not comply with the product specification of the protected name and as regards products which are not comparable, in so far as that use exploits the reputation of that PDO. The extent of that protection is consistent with the objective, confirmed in recital 97 of that regulation, of protecting PDOs against any use intended to take advantage of the reputation enjoyed by products which comply with the relevant specifications (see judgment of 6 October 2021, Esteves Lopes Granja v EUIPO – IVDP (PORTWO GIN), T‑417/20, not published, EU:T:2021:663, paragraph 31 and the case-law cited).
30 In that context, as regards products which are not comparable, it has been noted in the case-law that Article 103(2)(a)(ii) of Regulation No 1308/2013 seeks to prohibit any direct or indirect use of a registered name exploiting the reputation of a protected designation of origin by registration, in a form that is phonetically and visually identical with that name or, at least, highly similar (see judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 37 and the case-law cited).
31 According to the case-law, that implies that there is ‘use’ of a PDO, within the meaning of Article 103(2)(a) of Regulation No 1308/2013, where the degree of similarity between the signs at issue is particularly high and close to identicality, visually and/or phonetically, in such a way that the protected name is used in a form with such close links to that name that the sign at issue clearly cannot be dissociated from it (judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 38).
32 The case-law also states that the concept of ‘use’, within the meaning of Article 103(2)(a) of Regulation No 1308/2013, must be interpreted strictly, as otherwise the distinction between that concept and, in particular, that of ‘evocation’, within the meaning of Article 103(2)(b) of that regulation, would be rendered moot, which would be contrary to the intention of the EU legislature (judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 40).
33 In the present case, in its assessment of the complaint alleging commercial use of the earlier PDO for products which are not comparable and allegedly exploit its reputation, the Board of Appeal found that the degree of similarity between the signs at issue was not sufficient for the use of the contested sign to be classified as a direct or indirect commercial use of the earlier PDO for the purposes of Article 103(2)(a)(ii) of Regulation No 1308/2013.
34 Accordingly, after recalling, in paragraphs 32 to 35 of the contested decision, the different features of the word signs at issue, the Board of Appeal noted that the contested sign consisted of two word elements, the first of which, almost twice as long as the second, was distinctive, whereas the second fully reproduced the earlier PDO with an independent distinctive role. In those circumstances, the Board of Appeal concluded that the signs at issue were visually and phonetically similar to an average degree.
35 As regards the conceptual comparison, the Board of Appeal noted, in paragraph 36 of the contested decision, that the second element of the contested sign might be associated with the meaning of the word ‘harbour’ or be perceived as a meaningless element, while the first element might be perceived as the name of the harbour, a surname or a meaningless element. Consequently, the Board of Appeal found that a conceptual comparison was not possible or the signs were not conceptually similar in so far as the contested sign is perceived as a logical and conceptual unit not relating to the earlier PDO. The Board of Appeal concluded, in paragraph 37 of the contested decision, that the form in which the letters of the word ‘port’ were used in the contested sign was not so closely linked to the earlier PDO that the contested sign could not clearly be dissociated from it.
36 In the light of those assessments and contrary to what the applicant claims, it is not necessary to find that the signs at issue were visually and phonetically similar to a particularly high degree. In the light of the differences and similarities between those signs noted in the contested decision, recalled in paragraph 34 above, it should be found that the Board of Appeal was entitled to conclude that the signs were visually and phonetically similar to an average degree. As the Board of Appeal stated, even though the second word element of the contested sign, namely the element ‘port’, fully reproduced the earlier PDO with an independent distinctive role, that element followed the first word element of the contested sign, namely the element ‘quevedo’, which was almost twice as long as the second element and was itself also distinctive.
37 Consequently, the Board of Appeal was correct to find that the signs at issue were visually and phonetically similar to an average degree.
38 Similarly, it is not necessary to find, as the applicant submits, that the Board of Appeal made an error of assessment in finding that the word ‘port’ of the contested sign could be perceived as meaning ‘harbour’, that is to say a location by the sea or a river, or regarded as a meaningless element.
39 As regards the concept conveyed by the contested sign, the Board of Appeal was entitled to find that the word ‘quevedo’ could be perceived as the name of a harbour, a surname or also as a meaningless element and that the word ‘port’, which followed the word ‘quevedo’, might be associated with the definition of the word ‘harbour’, that is to say a location by the sea or a river, or might be meaningless. By comparison, the concept conveyed by the sign protected by the earlier PDO is that of a wine offering a guarantee of quality due to its geographical provenance. In that context, the Board of Appeal was entitled to find, in paragraph 36 of the contested decision, that the conceptual comparison between the signs at issue was not possible or those signs were not conceptually similar in so far as the contested sign is perceived as a logical and conceptual unit not relating to the earlier PDO.
40 In essence, the Board of Appeal found that the expression ‘quevedo port’ was a whole, a ‘logical and conceptual unit’, capable of being connected with a harbour or of having no specific meaning, which is, consequently, distinct from the concept of wine of quality due to its geographical provenance conveyed by the earlier PDO. In particular, the Board of Appeal stated, in paragraph 37 of the contested decision, that, in its opinion, it was unlikely that the form in which the letters of the word ‘port’ were used in the contested sign had such close links to the origin protected by the earlier PDO that that sign could not be dissociated from the latter.
41 To allege, as the applicant does, that the average European consumer who is reasonably well informed and reasonably observant and circumspect would, if he or she were an English speaker or a Portuguese speaker familiar with English, connect the contested sign with the name ‘Port’ as protected by the earlier PDO for wine of fresh grapes due to the presence of the common word ‘port’, does not suffice to call into question the assessment of the Board of Appeal.
42 First, it is apparent from the applicant’s arguments that the meaning to which it refers, namely that which connects the word ‘port’ with a wine of quality due to its geographical provenance, relates to a context in which wine is concerned. Therefore, according to The Oxford Advanced Learner’s Dictionary (7th Edition), as cited by the applicant, the third meaning of the word ‘port’ is ‘a strong sweet wine, usually dark red, that is made in Portugal[, which] is usually drunk at the end of a meal’. The same applies to the references made by the applicant to various names of port wines which combine a surname with the word ‘port’, and are consequently assessed in a context in which wine is concerned. In addition, the dictionary cited by the applicant confirms that the first two meanings of the word ‘port’ correspond, in essence, to a location by the sea or a river. Those meanings refer to the significance normally given to the term ‘port’ in a context in which wine is not particularly concerned.
43 Secondly, as EUIPO correctly stated, it must be observed that the association advocated by the applicant in respect of the contested sign seems unlikely where the relevant public encounters that sign in the context of olive oil. In such a situation, the view cannot be taken that the mere use of the word ‘port’ in the expression ‘quevedo port’ is sufficient to constitute such a close connection with the geographical origin protected by the earlier PDO that it cannot be dissociated from that origin. On the contrary, the more likely scenario, as the Board of Appeal found in the contested decision, is that the expression ‘quevedo port’ would be perceived by the relevant public as a logical and conceptual unit referring either to a harbour, that is to say a location by the sea or a river, or to a fanciful and meaningless expression, without that public connecting it to the logical and conceptual unit of a wine of quality due to its geographical provenance.
44 In that context, the applicant is also not convincing when it claims that the full reproduction of the name ‘Port’ of the earlier PDO in the contested sign is sufficient to constitute a commercial use for the purposes of Article 103(2)(a) of Regulation No 1308/2013.
45 To accept such an argument would amount to not taking account of the average degree of visual and phonetic similarity of the signs at issue. It follows from the case-law cited in paragraph 31 above that such similarity is not sufficient to constitute a commercial use for the purposes of Article 103(2)(a) of Regulation No 1308/2013.
46 In the last place, as regards the applicant’s criticism that the Board of Appeal did not follow the reasoning adopted by the second Board of Appeal of EUIPO in its decision of 17 February 2023 (Case R 531/2022-2, NERO CHAMPAGNE, paragraph 21), it must be borne in mind that the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal are led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation as interpreted by the EU judicature and not on the basis of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited).
47 In any event, there are several significant differences between the present case and the case which gave rise to the decision relied on by the applicant. Accordingly, as EUIPO notes, the element ‘nero’ of the sign contested in the case which gave rise to the decision relied on by the applicant is shorter than the element ‘champagne’ which precedes it. EUIPO also makes the relevant observation that the PDO ‘Champagne’ does not appear to be capable of conveying a conceptual content other than the one specific to sparkling wine produced in the Champagne region (France) which that name covers, whereas the name ‘Port’ protected by the earlier PDO refers not only to wine of the same name, but covers several other meanings, including that of the location by the sea or a river.
48 Consequently, it is necessary to reject the applicant’s arguments disputing the finding of the Board of Appeal that the degree of similarity between the signs was not sufficient to be classified as a commercial use for the purposes of Article 103(2)(a)(ii) of Regulation No 1308/2013.
The second complaint, alleging that the use of the contested sign to designate olive oils would result in the exploitation of the reputation of the earlier PDO
49 The applicant notes that, as a result of the errors raised in the first complaint, the Board of Appeal found that it had failed to submit evidence or coherent arguments to demonstrate specifically how the use of the contested sign, which seeks to protect olive oils, would result in the exploitation of the reputation of the earlier PDO protected for wine. The Board of Appeal, it argues, also found that the relevant public would not associate the contested sign or the designated goods with the name of the earlier PDO or the product it protects.
50 Those statements, in the applicant’s view, are incorrect because it is very likely that English- and Portuguese-speaking consumers, who are familiar with the use of the name ‘Port’ of the earlier PDO and brands of port wine which combine the use of that name with a surname, will associate the contested sign with the protected name. Moreover, various farms produce and sell wine and olive oil simultaneously. In addition, it argues, the fact that the other party to the proceedings before the Board of Appeal applied for the registration of the contested sign for port wine and olive oils shows that its intention was to associate those products with each other and thus benefit from the reputation of the earlier PDO.
51 Consequently, the Board of Appeal should have found that, when faced with the contested sign, the relevant public will take the view that the designated olive oils will have the same quality standards and share the same tradition as the port wine protected by the earlier PDO.
52 EUIPO disputes the applicant’s arguments.
53 As a preliminary point, it must be observed, as EUIPO stated, that the second complaint can be set aside for the sole reason that there can be no exploitation of the reputation of the earlier PDO without use thereof. It is apparent from paragraphs 33 to 46 above that the Board of Appeal was correct to find that the degree of similarity of the signs at issue was not sufficient to constitute a commercial use of the earlier PDO for the purposes of Article 103(2)(a)(ii) of Regulation No 1308/2013.
54 In any event, it should be recalled that, in order to assess the complaint alleging exploitation of the reputation of the earlier PDO and of the wine which it protects owing to the use of the contested sign for olive oil, the Board of Appeal highlighted that the products at issue were very different. In that regard, the Board of Appeal stated that the fact that those products may be high-end products frequently bought or sold in the same places, cannot suffice to render them similar from the perspective of the relevant public. The Board of Appeal also noted that it was not sufficient that the other party to the proceedings before it had obtained registration of the contested sign for port wines and it stated, in particular, that the applicant had not presented any specific argument or evidence demonstrating how the use of the contested sign for olive oil would result in the exploitation of the reputation of the earlier PDO protected for wine.
55 In the light of that reasoning, which is based, first, on the undisputed fact that the products in question are very different, and, secondly, on the finding that the similarity of the signs at issue was not sufficient to constitute a commercial use of the earlier PDO for the purposes of Article 103(2)(a)(ii) of Regulation No 1308/2013, it is clear that the Board of Appeal was entitled to conclude that the incorporation in the contested sign of the name ‘Port’ used by the earlier PDO was not capable of exploiting the reputation of that designation of origin (see, to that effect, judgment of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto, C‑56/16 P, EU:C:2017:693, paragraph 115).
56 Accordingly, contrary to what the applicant claims and for the reasons stated previously, it seems unlikely that the mere incorporation of the element ‘port’ in the contested sign in order to designate olive oil would be sufficient to establish an association between the contested sign and the name ‘Port’ used by the earlier PDO to protect wines based on their quality and geographical provenance.
57 Similarly, as EUIPO correctly submits, the fact that certain companies may produce and market or affix the same marks to olive oil and wine is not indicative of the relevant public’s perception of common qualities which may be connected with one or other or both of those products.
58 Lastly, it must be found that none of the arguments submitted by the applicant can call into question the finding made by the Board of Appeal in the contested decision that the applicant ‘failed to adduce evidence [or] at least develop a coherent line of argument to demonstrate specifically how the use of the contested sign, that seeks protection for olive oils in Class 29, would result in exploitation of the reputation of the [name] “Port” [of the earlier PDO] protected for wine’.
59 As in the proceedings before EUIPO (see paragraph 38 of the contested decision), the applicant merely makes general statements regarding the similarity of the signs at issue and the fact that there is, in its view, almost automatic exploitation of the reputation of the earlier PDO and its image irrespective of the nature of the products concerned.
60 In particular, the communication by the applicant to the Court of six decisions adopted by Portuguese authorities and courts between 2012 and 2019, submitted to prove that the applications for registration of the marks for olive oil PORTO DE ÁGUAS PROFUNDAS, PORTOLIVES, PORTO.COME, OHPORTO, QUINTA DO PORTONOGUEIRA and QUINTA DE PORTUS NOGUEIRA were rejected in Portugal, cannot suffice to call into question the validity of the reasoning of the Board of Appeal set out in paragraphs 53 to 58 above.
61 It should be noted that, according to settled case-law, the EU trade mark regime is autonomous and that the legality of decisions of the Boards of Appeal is assessed solely on the basis of Regulation 2017/1001, with the result that EUIPO, or, on appeal, the General Court, is not required to reach the same conclusions as those arrived at by national authorities or courts in similar circumstances (see judgment of 15 December 2015, LTJ Diffusion v OHIM – Arthur et Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 37 and the case-law cited).
62 In addition, to support its application, the applicant merely stated that, ‘not surprisingly, there [were] several administrative and judicial decisions, in Portugal, rejecting the registration of olive oil trade marks with the words “Porto” or “Port”’ while referring, without further detail, to the content of the six decisions submitted in annex. By contrast, it did not develop any specific arguments capable of calling into question the reasoning of the Board of Appeal as regards, in particular, the way in which the use of the contested sign, that seeks protection for olive oils in Class 29, would result in exploitation of the reputation of the name ‘Port’ of the earlier PDO protected for wine.
63 Consequently, in the absence of any duly substantiated arguments, it is necessary to reject the applicant’s arguments disputing the finding of the Board of Appeal that, in essence, the use of the contested sign was not capable of exploiting the reputation of the earlier PDO within the meaning of Article 103(2)(ii) of Regulation No 1308/2013.
64 Accordingly, the first plea in law must be rejected as unfounded.
The second plea in law, alleging infringement of Article 103(2)(b) of Regulation No 1308/2013
65 The applicant submits that the Board of Appeal made several errors of assessment by finding that the contested sign did not amount to evocation of the name ‘Port’ of the earlier PDO within the meaning of Article 103(2)(b) of Regulation No 1308/2013. First, as has already been stated, it is incorrect to find that the element ‘port’ of the contested sign could be associated only with the meaning of the word ‘harbour’ or regarded as a meaningless element. Secondly, as has also already been stated, the Board of Appeal should have taken account of the significant number of undertakings which produce and sell olive oil and wine simultaneously. Thirdly, the choice of the expression ‘quevedo port’ to designate olive oils like port wine shows the intention to trigger in the minds of the relevant public the image of the port wine protected by the earlier PDO.
66 EUIPO disputes the applicant’s arguments.
67 It should be borne in mind, first of all, that, unlike the conduct referred to in Article 103(2)(a) of Regulation No 1308/2013, the actions which fall within the scope of Article 103(2)(b) thereof do not use the protected name itself either directly or indirectly, but suggest it in such a way that it causes the consumer to establish a sufficiently close connection with that name (see judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 39 and the case-law cited).
68 The Court of Justice has specified that the connection between the contested sign and the product which has a protected name must be sufficiently clear and direct, and therefore a mere association with the PDO or the geographical zone relating thereto cannot be used (see, to that effect, judgments of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 22, and of 7 June 2018, Scotch Whisky Association, C‑44/17, EU:C:2018:415, paragraph 53).
69 In that context, it has been noted in the case-law 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 or her mind is that of the product whose designation is protected (see judgment of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto, C‑56/16 P, EU:C:2017:693, paragraph 122 and the case-law cited).
70 However, the partial incorporation of a PDO in the contested sign is not a necessary condition for there to be evocation. Indeed, there may be evocation of a PDO where, concerning products which are similar in appearance, the sales names are phonetically and visually similar (see, to that effect and by analogy, judgments of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 33 and the case-law cited, and of 7 June 2018, Scotch Whisky Association, C‑44/17, EU:C:2018:415, paragraph 48).
71 However, evocation may exist in the absence of phonetic and visual similarities between the signs at issue, in particular where there is conceptual proximity between terms emanating from different languages. It is nevertheless necessary that the proximity between the signs, irrespective of its origin, be capable of bringing to the mind of the consumer the product which has a protected name, when he or she is confronted with a similar product bearing the disputed name (see, to that effect and by analogy, judgments of 21 January 2016, Viiniverla, C‑75/15, EU:C:2016:35, paragraph 35, and of 7 June 2018, Scotch Whisky Association, C‑44/17, EU:C:2018:415, paragraphs 49 and 50).
72 It follows from the foregoing that, in order to establish an evocation within the meaning of Article 103(2)(b) of Regulation No 1308/2013, the Board of Appeal was entitled to find, in paragraph 49 of the contested decision, that the decisive criterion in the present case was whether, when members of the relevant public were confronted with the contested sign, the image triggered directly in their mind was that of the product covered by the earlier PDO, taking into account the partial incorporation of the name protected by the earlier PDO in the contested sign, the visual and/or phonetic similarity, or the conceptual proximity between them (judgment of 7 June 2018, Scotch Whisky Association, C‑44/17, EU:C:2018:415, paragraphs 51 and 56, and order of 23 March 2023, Domaine Boyar International v EUIPO – Consorzio DOC Bolgheri e Bolgheri Sassicaia (BOLGARÉ), T‑300/22, not published, EU:T:2023:159, paragraph 35).
73 In the present case, as regards the complaint alleging evocation of the earlier PDO, the Board of Appeal stated in the contested decision that, although the word ‘port’ is included as an independent distinctive element of the contested sign, the designated olive oils were so different from wine protected by the earlier PDO that there was no reason to believe that the relevant consumer would establish a sufficiently clear and direct connection between the contested sign used to designate olive oils and wine protected by the earlier PDO. In the absence of any convincing arguments or evidence to the contrary, the Board of Appeal found that, since the goods under comparison were completely different, it is very unlikely that the relevant public would establish a clear and direct connection between the contested sign and the wine protected by the earlier PDO, its reputation notwithstanding.
74 It is clear that no aspect of that finding is called into question by the applicant’s arguments.
75 First, the Board of Appeal was entitled to find, in the light of the case-law, the comparison of the signs at issue and the features specific to the wine, on the one hand, and to olive oil, on the other, that there was no reason to believe that, when confronted with the contested sign used to designate olive oil, the relevant consumer would establish a sufficiently clear and direct connection between that sign and the wine protected by the name ‘Port’ of the earlier PDO (see, to that effect and by analogy, judgments of 14 September 2017, EUIPO v Instituto dos Vinhos do Douro e do Porto, C‑56/16 P, EU:C:2017:693, paragraphs 124 and 125, and of 18 November 2015, Instituto dos Vinhos do Douro e do Porto v OHIM – Bruichladdich Distillery (PORT CHARLOTTE), T‑659/14, EU:T:2015:863, paragraph 76).
76 It may be considered that the Board of Appeal did not make any error of assessment by finding, in the conclusion of the reasoning set out in the contested decision, that, even if the term ‘port’ forms an integral part of the contested sign, the average consumer, even if he or she is an English speaker or a Portuguese speaker familiar with the English language, when confronted with an olive oil bearing that sign, will not associate it with a port wine covered by the earlier PDO. Such an assessment is confirmed by the significant differences between the respective features of a port wine and an olive oil in terms of, inter alia, ingredients, physical appearance and taste, of which the average consumer is well aware, irrespective of whether he or she is familiar with Mediterranean cuisine.
77 Secondly, as EUIPO correctly submits, the fact that certain companies may produce and market olive oil and wine at the same time is not indicative of the relevant public’s perception of common qualities which may be connected with one or other or both of those products. Similarly, the argument based on the intention of the other party to the proceedings before the Board of Appeal of EUIPO is irrelevant in so far as such an intention, assuming that it exists, which has not been demonstrated in any way, is not required and is not, therefore, relevant for assessing whether there is evocation of a PDO (see judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 68).
78 Thirdly, and in any event, none of the arguments submitted by the applicant calls into question the finding made by the Board of Appeal in paragraph 55 of the contested decision that ‘given the lack of convincing arguments or evidence to the contrary, the fact that the goods under comparison are completely different makes it very unlikely that the relevant public would make a clear and direct connection between the contested sign and the wine protected by the [earlier PDO], albeit being reputed’. On that point, it is clear that the new evidence submitted by the applicant (see paragraph 13 above) would not, even if it could be taken into account, be capable of calling into question the finding of the Board of Appeal that there are significant differences between the respective features of a port wine and an olive oil.
79 Consequently, it is necessary to reject the applicant’s arguments disputing the finding of the Board of Appeal that, in essence, the use of the contested sign was not capable of evoking the earlier PDO within the meaning of Article 103(2)(b) of Regulation No 1308/2013.
80 Accordingly, the second plea in law must be rejected as unfounded, and, consequently, the action must be dismissed in its entirety without it being necessary to rule on the plea of inadmissibility raised by EUIPO regarding the annexes submitted for the first time before the Court.
Costs
81 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
82 Even though the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event that an oral hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders each party to bear its own costs.
Marcoulli | Valasidis | Spangsberg Grønfeldt |
Delivered in open court in Luxembourg on 26 February 2025.
V. Di Bucci | S. Papasavvas |
Registrar | President |
*Language of the case: English.
© European Union
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