Wine Law

24 II.1.2. Prior designation of origin or geographical indication Unlike trademarks, the essential function of DOs and GIs is not to identify the commercial origin of goods or services, but is to guarantee to the consumer the geographical origin of the goods and the special qualities connected therewith. Based on the absolute grounds for refusal or nullity [Art. 7.1(j) EUTMR], DOs and GIs are protected only in respect of comparable products. Their inclusion, as a relative ground for refusal or invalidity in Articles 8.6 and article 60.1(d), allows protection of the latter in case of risk of confusion, and thus with respect to similar products or services . The inclusion of GIs as relative grounds has been made by EU Regulation 2015/2424. Until then, they were covered by general grounds related to other signs in the course of trade, which are still protected by Article 8.4. Furthermore, unlike Article 7.1(j) concerning absolute grounds, Article 8.6 does not refer to international agreements to which the Union or the concerned Member State is part of. However, the reference to the Union legislation and national law should include them. Article 8.6 is intended to apply to DOs and GIs that may prohibit the use of a subsequent trademark. According to EU Regulation 1308/2013, the acts of use concerned are of direct or indirect commercial use, misuse, imitation or evocation, and other false or misleading indication and practice, as for absolute grounds for refusal or nullity (see above I.4.2.). These acts do not require the assessment of a likelihood of confusion between the signs. Nevertheless, in the famous case “Port Charlotte” 53 , an application for a declaration of invalidity based on articles 8.4, 53.1(c) and 53.2(d) of Regulation 207/2009 – replaced respectively by articles 8.4, 60.1(c) and 60.2(d) EUTMR – was brought before the ECJ against the trademark Port Charlotte, which had been restricted to "whisky", by reason of its use and its reference to the PDO “Porto” or “Port” wines. Instead of referring to the provision specific to AOs, the applicant for a declaration of invalidity relied on the general provisions protecting unregistered trademarks and signs in the course of trade with a scope other than local, in order to claim the application of Portuguese national law and thus circumvent the 53 ECJ 14 September 2017, Port Charlotte , C-56/16.