Last month, the OHIM Opposition Division rejected CTM application PORTOBELLO ROAD No. 171 LONDON DRY GIN LONDON ENGLAND (figurative mark) for “gin” on the basis of the earlier PDO PORTO.

Background

In October 2012, the Applicant filed CTM application No 11288073 for the mark PORTOBELLO ROAD No. 171 LONDON DRY GIN LONDON ENGLAND (fig.) in class 33, for “gin”.

Instituo Dos Vinhos Do Douro e Do Porto IP filed an opposition on the basis of, amongst others, the earlier Protected Designation of Origin (“PDO”) PORTO registered for wine, invoking Article 8(4) CTM Regulation.

Decision

In its decision of 17 April 2015 with reference to Opposition No B2338120, the Opposition Division recalled amongst others the Cognac II decision (Judgment of the ECJ of 14 July 2011, CX-4/10 and C-27/10) that confirmed that the EU Regulations governing the conflict between trade marks and PGI and PDO products are directly applicable and have immediate effect.

The Opposition Division decision further added that according to new Office practice, the EU system of protection of PGIs and PDOs for wines and spirits is held to be exhaustive in nature and supersedes national protection for those goods (This in line with the ECJ case law on the Foodstuffs Regulation, although the Court has not specifically pronounced upon the exhaustive nature of the Wines and Spirits Regulations).

As the Opponent was held to have submitted due evidence of the compliance of the requirements under  Article 8(4) CTM Regulation, the Opposition Division concluded that the assessment is affected by the fact that the earlier sign is an appellation of origin and not a trade mark, that the CTM application in question evokes the PDO and since the goods are held to be comparable, the application was rejected.