Wine Law

PROTECTION OF WINE NAMES BY TRADEMARK LAW 123 even in the absence of any likelihood of confusion between the products concerned, “even though the term ‘port’ forms an integral part of the contested mark, the average consumer, even if he is of Portuguese origin or speaks Portuguese, in reaction to a whisky bearing that mark, will not associate it with a port wine covered by the designation of origin in question”. Consequently, the Court carried out an analysis akin to that of the likelihood of confusion, even though it should have disregarded it, as the Advocate General had recommended, and “to focus on whether the new mark created ‘in the mind of the public an association of ideas regarding the origin of the products’, particularly since the products concerned are similar in appearance, both being bottled as alcoholic beverages, and in the light of the (partial) aural similarity between the well-known PDO and the mark in respect of which a declaration of invalidity was sought”52. This analysis of evocation runs counter to the desire hitherto expressed, in particular in EU regulations, for greater protection of DOs and GIs to the benefit of the protection of consumers. II.1.3. AVAILABILITY REGARDING PRIOR SIGNS IDENTIFYING A LEGAL ENTITY When filing a trademark, the applied sign has to be available regarding signs identifying a legal person in the conduct of its business and, accordingly, its economic activity. Articles 8(4) and 60(1) EUTMR allow a claiming of nonregistered trademarks or other earlier signs used in the trade of more than mere local significance as grounds for opposition and relative nullity. The EUTMR provides no definition of these signs, but it settled that signs used in the course of trade are those that identify the origin of an activity, such as trade names, company names, domain names or even titles. They are subject to use requirements under national and European standards, which have to be assessed together. This applies, in particular, to the “intensity of use” under the national standard and “use in trade of more than mere local significance” under the European standard. Therefore, the criterion of “more than mere local significance” is more than just a geographical examination. The economic impact of the use of the sign must also be evaluated. Consideration must be given, and the evidence must relate, to the intensity and length of use, the spread of the goods and the advertising under the sign and the media used for that advertising, including the distribution of the advertising53. 52 Opinion of General Advocate Campos Sánchez-Bordona, 18 May 2017, C-56/16 § 98. 53 See EUIPO Trademark Guidelines.

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