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At the time of year when thoughts turn to chestnuts roasting and a mince pie and glass of port before an open fire, the EU General Court has been asked to consider the application of Portuguese trade mark law and the EU Protected Designation of Origin guidelines on port wine.
The case concerned the Bruichladdich Distillery Company Limited of Islay which applied in 2006 for a Community Trade Mark PORT CHARLOTTE to protect its whisky brand, which CTM was registered in 2007. In 2011 the Instituto dos Vinhos do Douro e do Porto sought a declaration that the PORT CHARLOTTE mark applied for was invalid as appellations of origin “porto” and “port” were protected by Portuguese law and European Union Protected Designation of Origin (“PDO”) guidelines.
The Instituto’s application for Declaration of Invalidity was rejected and it appealed to OHIM and raised several arguments including one that protection under the PDO should extend to any mark including the term “port”. The General Court decided that use of the mark PORT CHARLOTTE was not a use of the PDO for a comparable product and that there was no misuse, imitation or evocation of the PDOs. “PORT CHARLOTTE” would be understood to be a reference to a harbour named after an individual, rather than a link to the Protected Designation of Origin.
Further, the Court was not persuaded that the average consumer of whisky was familiar with the locality of PORT CHARLOTTE and the term was not descriptive just because there is a whisky distillery in a little known place of that name. There was no serious risk that a consumer would be deceived by associating the term “port” in the trade mark with a port wine.
However the EU General Court found that the Appeal Court did not take account of the applicable Portuguese law on whether the PDO’s constituted “earlier rights”. For that reason the rejection of the invalidity claim was wrong and the PORT CHARLOTTE Mark should not have been registered
So when you sit down to enjoy your mince pie and glass of port, spare a thought for those less fortunate – including the owners of a certain Islay distillery!
Merry Christmas – or should we say Feliz Natal?
For guidance on trade mark registration how best to protect your intellectual property against unfair competition and passing off contact Tony Catterall, Head of the Intellectual Property Team at Taylors, on 01254 297900 or via email at tony.catterall@taylors.co.uk. Taylors is the only North West based firm to have been appointed as a legal affiliate to the National organisation Anti Copying In Design (“ACID”).
Carole Bullock
Chartered Legal Executive
Taylors Solicitors
Office: 01254 297942
Email: carole.bullock@taylors.co.uk
Web: www.taylors.co.uk
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A glass of port with your mince pie - or is that whisky?