Wine Law

19 Thus, a prior right can lead, if it is invoked by its holder, to the refusal or cancellation of the subsequent trademark. Article 60 EUTMR lists, on a non-exhaustive basis, prior rights that may conflict with a later trademark and that may be claimed as a relative ground for invalidity. They could be separated in the following categories: signs in the course of trade and rights related to personality and creation. Insofar as the objective of protection underlying these signs and rights is different, different substantive and procedural rules apply to their exercise. Likewise, signs in the course of business may be invoked in invalidity proceedings, but also as soon as the subsequent sign is filed in opposition proceedings. The other rights are merely grounds for invalidity. II.1. Availability Regarding Signs in the Course of Trade The essential function of a trademark is to distinguish products and services of a company from those of its competitors. As a consequence, to be registered as a trademark, a sign should be available with regard to signs identifying the origin of a product or a service, i.e. with regard to earlier trademarks and with regard to a prior PDO or a GI, as well as to signs identifying an economic activity. These grounds are relative grounds for refusal, that could be claimed in opposition proceedings, but also in nullity and infringement proceeding. II.1.1. Prior trademarks 1) Pursuant to Articles 8 and 60.1 EUTMR, the prior trademarks concerned are registered trademarks with an effect in the Union (i.e. national trademarks, EUTMs and international trademarks designating the Union or a Member State), well-known trademarks according to Article 6bis of the Paris Convention 40 (i.e. non-registered trademarks of a well-known character). Such prior trademarks should be considered as grounds for nullity if they are identical or similar to the contested EUTM application and cover identical or similar goods and services (Arts. 8.1 and 60.1 EUTMR). This provision is an application of the principle of the trademark speciality, which limits the scope of protection conferred by a trademark to the products 40 Article 2 of the Joint Recommendation concerning provisions on the protection of well-known trademarks, WIPO, 20-29 September 1999.