## Facts

- Instituto dos Vinhos do Douro e do Porto IP (IVDP) was responsible for protecting wine protected designations of origin (PDOs) including “Porto” and “Port.”
- Bruichladdich Distillery Co. Ltd owned an EU word mark registration for “PORT CHARLOTTE” covering alcoholic beverages, including whisky.
- IVDP sought a declaration of invalidity of the “PORT CHARLOTTE” mark, arguing that the element “PORT” unlawfully used or evoked the “Porto”/“Port” PDOs under the EU wine regime and, in addition, that national-law protection for those PDOs could be relied on in EU trade mark invalidity proceedings.
- The EUIPO Board of Appeal dismissed the invalidity application, concluding that “PORT CHARLOTTE” did not use or evoke the protected PDOs.
- IVDP brought an action before the General Court. The General Court annulled the Board’s decision, finding legal error in how the Board applied the PDO protection rules (including the notion of “evocation”) and the relationship between the EU PDO regime and other legal bases invoked by IVDP.
- EUIPO, supported by the European Commission, appealed to the Court of Justice. IVDP brought a cross-appeal, supported by the Portuguese Republic.

## Issues

1. Whether the EU rules protecting wine PDOs (including “Porto” and “Port”) provide an exhaustive scheme that prevents reliance on national-law protection (or other EU trade mark provisions used to channel national law) to obtain broader protection in EU trade mark invalidity proceedings.
2. What the correct legal test is for “evocation” (and related prohibited conduct) of a wine PDO under the EU wine market rules, and whether “PORT CHARLOTTE” meets that test.
3. Whether, applying the proper test, the average European consumer would associate “PORT CHARLOTTE” with Port wine/PDOs, or instead understand the mark as a whole as referring to a harbour associated with the name “Charlotte.”

## Decision

- The Court of Justice upheld EUIPO’s appeal and set aside the General Court’s judgment.
- The Court dismissed IVDP’s cross-appeal.
- Giving final judgment in the matter, the Court dismissed IVDP’s action before the General Court and thereby upheld the EUIPO Board of Appeal decision rejecting invalidity.
- As a result, the EU word mark “PORT CHARLOTTE” remained valid against the challenge based on the “Porto”/“Port” PDOs.

## Legal Principles

- The EU wine PDO protection regime (then Article 118m of Regulation No 1234/2007, now reflected in later legislation) is a complete scheme for the protection of wine PDOs; Member States may not provide, and parties may not invoke, parallel national protection to obtain different or additional protection in EU trade mark proceedings where the dispute is governed by that EU scheme.
- “Evocation” of a PDO requires that the contested sign, when encountered by the relevant public, calls to mind the product protected by the PDO; the assessment is made by reference to the average European consumer who is reasonably well informed and reasonably observant and circumspect.
- Whether there is “evocation” is assessed globally, taking account of the sign as a whole, including its visual, phonetic, and semantic meaning; the mere presence of letters matching a PDO term is not enough if the sign’s overall meaning leads consumers away from the protected product.
- Where the factual findings support that the relevant public will understand “PORT CHARLOTTE” as a single expression referring to a harbour associated with the name “Charlotte,” and not as a reference to Port wine, “evocation” of the “Porto”/“Port” PDOs is not established.

## Conclusion

The Court of Justice held that EU law provides a complete set of rules for protecting wine PDOs such as “Porto” and “Port,” so IVDP could not expand that protection through national-law routes in EU trade mark invalidity proceedings; applying the correct “evocation” test to the mark as a whole, the Court concluded that “PORT CHARLOTTE” would be understood as referring to a harbour connected to the name Charlotte rather than Port wine, set aside the General Court, and confirmed the EUIPO decision maintaining the mark.


European Union Intellectual Property Office and Commission v. Instituto Dos Vinhos Do Douro E Do Portoip and Portuguese Republic, Case No. C-56/16 P (2017)