Nicolas Clarembeaux, Vice-Chair of the MARQUES Geographical Indications Team, summarises the recent judgment of the EU General Court in Case T-239/23, Nero Champagne.

Background

On 19 February 2019, the Italian company Nero Lifestyle filed an application for registration of the word sign NERO CHAMPAGNE as an EU trade mark for products in class 33 and services in classes 35 and 41.

The Comité interprofessionnel du vin de Champagne (CIVC) and the Institut national de l’origine et de la qualité (INAO) objected to registration on the basis of exploitation of reputation of the Protected Designation of Origin (PDO) Champagne under Article 103(2)(a)(ii) Regulation No 1308/2013 and false or misleading indications as to the nature or essential qualities of the product under Article 103(2)(c) of the Regulation.

Following the EUIPO’s Opposition Division, the Board of Appeal (BoA) upheld the exploitation of reputation for goods that did not comply with the specifications of the PDO “Champagne” as well as for services unrelated to Champagne wine. Exploitation of reputation was however rejected for goods which complied with the PDO specifications and services which related to such compliant goods.

CIVC and INAO appealed the BoA’s decision before the EU General Court. Their appeal was supported by oriGIn and by the French and Italian governments.

Annulment

The General Court held that the BoA’s decision must be annulled further to an error in law and a failure to state reasons.

The crux of the dispute related to the so-called “limitation theory”. According to that theory it is presumed that a trade mark that includes a PDO cannot as a matter of principle exploit the reputation of that PDO when that mark is exclusively registered in respect of products complying with the specifications of that PDO or in respect of services referring to such compliant products.

The General court restated that the theory originates in EUIPO’s guidelines for examination which presume that where a trade mark application is limited “to goods in conformity with the specification of the relevant PDO the function of the PDO in question is safeguarded” that “consequently, an opposition against a trade mark application that has been appropriately limited will not succeed”.

In that respect the General Court notes that the BoA’s decision lacks clarity in its application of that “limitation theory” as it enables two readings.

According to the first reading, the “limitation theory” constitutes in essence a non-rebuttable presumption that the reputation of the PDO is not exploited when designating compliant products and related services. Pursuant to the second reading, it constitutes a rebuttable presumption in that respect.

According to the General Court the latter may be overturned on the basis of concrete, substantiated and consistent elements capable of demonstrating that the use of the mark is likely to exploit the reputation of the PDO.

The first reading amounted to an error in law. Regarding the second reading, the General Court held that the mere fact that products comply with the PDO specifications and services relate to compliant products is not sufficient ab initio to conclude that a trade mark registered in respect of such products or services is not capable of taking unfair advantage of the reputation of the PDO without having specifically examined “the particular characteristics of that mark and all the relevant circumstances of the case”.

The General Court lists various elements that may have been relevant in that respect, including the outstanding reputation of the PDO Champagne, the fact that the contested trade mark is a word mark and can therefore be used in many different ways on the market, including in a manner contrary to the objectives of the PDO and the fact that the term “nero” qualifies the term “champagne”.

The failure to state reasons was withheld as the Board of Appeal did not (sufficiently) examine those circumstances.

Alteration

Finally the General Court held that the BoA was required to find, following a global assessment of the evidence, that the evidence submitted by CIVC and INAO was sufficient to demonstrate that the word “nero” could be perceived as evoking either the champagne grape variety or its colour, with the result that, for at least a part of the relevant public, the mark applied for could be perceived as conveying a false or misleading indication within the meaning of Article 103(2)(c) of Regulation No 1308/2013.

Reference was made to the term “nero” which is used in several well-known Italian grape varieties such as “Nero d’Avola” and “Nero Buono”, and is even included in the name of Italian PDOs such as “Pinot Nero dell’Oltrepò Pavese” and “Castel del Monte Bombino Nero” and to the fact that the word “nero” will be understood by the Italian-speaking public as meaning “black” by reference to the colour of the wine and that the public may therefore think that the product is a new variety of Champagne, namely “black Champagne” even though, under the specifications of the PDO, a champagne can only be white or rosé.

The General Court altered the BoA’s decision along those lines and annulled the Opposition Division’s decision insofar as it rejected the opposition.

Comment and take-aways for trade mark applicants

The decision can be appealed before the Court of Justice of the European Union on points of law.

The key takeaway of the decision for trade mark applicants is that the inclusion of GIs in trade mark applications entail risks of objections and conflicts, even if registration is sought only for products complying with the GI specifications.

It is also worth noting that the presumption that compliance with GI specifications will not amount to an “exploitation of reputation” is in particular susceptible of being rebutted where:

• the GI is used in a trade mark function rather than in a GI function, as already referred to by the General Court in its judgment in Case T‑700/20 Steirisches Kürbiskernöl: “An operator marketing goods [meeting the conditions of a GI] may use the geographical indication at issue, [but that] does not, however, entitle him or her to use such an indication as a trade mark”;
• the incorporation of a GI in a trade mark is liable to give rise to false or misleading situations, such as those referred to in Article 26(c) and (d) of Regulation 2024/1143.

Nicolas Clarembeaux is counsel with ALTIUS in Belgium and a member of the MARQUES GI Team

Episode 25 of the Talking MARQUES podcast has just been published.

This episode focuses on the 39^th MARQUES Annual Conference, which takes place in The Hague, The Netherlands, from 16-19 September 2025.

The podcast features Willem Leppink, chair of The Hague Team; Liselott Enström, a member of the Team; and Dieuwerke van der Schalk, co-leader of the Corporate Task Force.

In the podcast, they discuss the attractions of The Hague as a host city; the highlights of the educational programme and workshops; the social events; the Corporate Breakfast for corporate members; and the key benefits of attending the Annual Conference.

They also answer some questions about the Annual Conference accommodation and travel in the Netherlands.

You can listen to the Talking MARQUES podcast on the MARQUES website here or on Spotify.

At the time of writing, 842 people from 79 countries have already booked for the Annual Conference.

Full information about the Annual Conference (including the programme and speakers, social activities, registration fees and accommodation details) is available on the MARQUES website here. You can also register online via this page.

MARQUES strongly recommends early registration for the Annual Conference to avoid disappointment.

A set of pre-assessment services, some of them powered by AI, is now live in EUIPO’s Easy Filing application form for EUTMs.

Easy Filing was launched in 2021 and is available for direct filers based in the European Economic Area, such as SMEs and individuals.

The pre-assessment services were previously available in the advanced EUTM filing form and provide real-time risk alerts and filing guidance. The services cover:

• Similar absolute grounds decisions (AI-powered)
• Earlier EUTM with an identical verbal denomination and at least one matching class of goods or services
• Conflicts with .eu domain names
• Conflicts with other IP rights such as registered geographical indications, traditional specialities guaranteed and traditional terms for wine or plant varieties
• Offensiveness, morality, public policy, or deceptiveness

EUIPO states: “If the system flags a potential issue, applicants can contact the EUIPO directly via the ‘Chat with us’ functionality, and seek connection with a local IP expert in their own language through the EUIPO’s Pro bono support service to remedy any hurdle on the road to registration. The results of the pre-assessment services however never replace the final decision taken by a human EUIPO examiner.”

Read more on EUIPO’s website here.

The UK Supreme Court recently published its judgment in Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another concerning two UK trade marks for the UMBRO double-diamond logo, registered for goods in class 25 and widely used on football boots (pictured right)

Iconix, the trade mark owner, alleged that the Dream Pairs logo (DP sign, pictured left) as used on football boots sold in the UK was similar to the UMBRO marks and that its use was likely to cause confusion on the part of the public under section 10(2) of the Trade Marks Act 1994, and also infringed under section 10(3).

The first instance judge found no infringement, saying there was “at most a very low degree of similarity”, but this finding was overturned on appeal: the Court of Appeal said that when the DP sign was viewed from any angle other than square-on, there was “a moderately high level of similarity”.

In its judgment on 24 June, the UK Supreme Court made the following findings:

• It rejected the submission (made by Dream Pairs) that extraneous circumstances such as how the goods are marketed or subsequently perceived are not to be taken into account in assessing similarity between the mark and the sign.
• It agreed with the Court of Appeal that “it is possible in an appropriate case for use of a sign to give rise to a likelihood of confusion as a result of post-sale confusion even if there is no likelihood of confusion at the point of sale”.
• It found that: “This was a case in which there were not matters such as irrationality, error of principle or of law which justified the Court of Appeal in substituting their own different view of the answer to the multifactorial question facing the judge from that which he had reached.” It added: “We would readily acknowledge that reasonable judicial views might differ on this issue about similarity when viewed from an angle, but our task is not to form our own view, unless both the judge and the Court of Appeal made what may loosely be called appealable errors.”

The Court’s ruling reinstates the first instance finding of no infringement.

The EUIPO Boards of Appeal are holding an IP Tertulia with the Korean Boards of Appeal on Thursday 3 July 2025.

Topics to be covered include: the Korean trade mark and design appeal system, recent Korean case law on absolute and relative grounds, and recent EUIPO Boards of Appeal case law on absolute and relative grounds.

The event will feature speakers from the EUIPO Boards of Appeal and the Intellectual Property Trial and Appeal Board (IPTAB) of the Korean Intellectual Property Office (IPTAB):

• Mr Sven STÜRMANN, President of the EUIPO Boards of Appeal
• Ms JO Hyunjoo, Deputy director, Trial policy division, IPTAB
• Ms PARK Jaewon, Administrative trademark Judge of Board 13, IPTAB
• Ms Alejandra GONZÁLEZ FERNÁNDEZ, Member of the 1st Board, EUIPO Boards of Appeal

The Tertulia is being held in Alicante from 17:00 to 19:30 local time. However, online participation is also possible and the Tertulia is open to everyone.

You can register to join the event on the EUIPO website here, where you can choose whether to join online or in person.

There will be simultaneous translation between Korean and English.

There is just one more week until the end of the Early Bird booking period for the MARQUES Annual Conference 2025, which will be held in The Hague, The Netherlands from 16 to 19 September.

The Early Bird discount is available for full residential or non-residential packages booked by Friday 27 June.

The theme of this year’s Conference is “Brand Changes in an International Context”. Sessions will cover a wide range of topics including: the impact of external factors on IP work; brands in international trade; the rise of sustainability; international jurisdiction in trademark litigation; brands in international M&A; brand revivals; and the latest CJEU and EU General Court case law.

There will also be seven workshops and the opportunity to join a visit to Europol headquarters.

The social programme includes: Welcome Reception at the World Forum on 16 September; Cultural Evening at Madurodam on 17 September; and Gala Dinner Evening in De Broodfabriek on 18 September.

This year, you can choose your hotel when booking (subject to availability). The four conference hotels are the Novotel, Leonardo, Marriott and Hilton.

The Early Bird rate for MARQUES members is €3,100 (fully residential package) or €2,545 (full programme excluding accommodation).

The Early Bird rate for non-members is €3,950 (full residential package) or €3,395 (full programme excluding accommodation).

Find out more about the Annual Conference on the dedicated page on the MARQUES website. This page includes links to: the programme; accommodation details; tours/excursions; registration fees; terms and conditions; getting there; and sponsors; and online registration.

As of 19 June, 568 people form 70 countries had already booked their place at the Annual Conference.

On 12 May 2025, the EUIPO released a detailed study analysing how generative AI (GenAI) impacts EU copyright law. Gabriele Engels, Chair of the MARQUES Cyberspace Team, explains more.

The study focuses on three areas: the use of copyrighted content as training data by GenAI models (GenAI input), the legal status of AI-generated content (GenAI output) and the broader implications for rights holders, AI developers and the copyright ecosystem.

Although designed for legal experts and policymakers, the findings are significant for tech companies, creators, platforms and rights holders. As companies adopt GenAI on a growing scale, legal and commercial questions around data use, authorship, licensing and enforcement are in urgent need of clear answers.

To help these stakeholders, EUIPO plans to launch a Copyright Knowledge Centre in November 2025, aimed at supporting rights holders to manage the use of their works, inform EU policymakers and tackling key challenges.

GenAI inputs

AI models need vast amounts of data to train their algorithms. This is often collected through web crawling or scraping practices that may involve copyright-protected material. As a result, many of the measures used by copyright holders to control access to their works focus on combating this practice.

Legal background

Under the EU’s Copyright in the Digital Single Market Directive (DSM Directive), text and data mining (TDM), which is the reproduction of content for training purposes, is allowed in specific circumstances.

In this context, Article 4 of the DSM Directive provides for the rights holders ability to “opt out” of TDM by clearly stating their objection, and thereby reserving their exclusive copyrights. For this opt out to be valid, the reservation must be made expressly, by the rights holder and in an appropriate manner, including “machine-readable means” for content made publicly available online. In case of such an opt out, developers must obtain an authorisation by the right holder, usually a licence agreement, before using the content.

The EU’s Artificial Intelligence Act (EU AI Act) adds that GenAI providers must respect TDM opt-outs by copyright holders and disclose sufficiently detailed summaries of the training data they utilise. It also requires AI-generated content to be detectable in a machine-readable format.

Rights reservations

Robots Exclusion Protocol (REP) is a technical tool that website owners use to express their rights reservations and manage web crawling and scraping activities. However, there is a consensus amongst stakeholders that REP doesn’t meet the DSM-Directive’s standards for expressing copyright opt-outs in an appropriate manner.

It is seen as an incomplete and temporary solution due to its voluntary nature: it has to be complied with by scrapers, which undermines its enforceability as a technical safeguard.

A widely acknowledged limitation is REP’s inherent lack of granularity and specificity regarding permitted uses. It requires website managers to actively configure and maintain restrictions, making implementation inconsistent across different sites.

No opt-out standard

No opt-out mechanism has emerged as a standard for rights holders to express their TDM rights reservations. Copyright holders use a mix of various legal measures (unilateral declarations, licensing constraints, website terms and conditions) and technical measures (metadata and content provenance protocols).

Legally driven measures are typically applied to specific copyright-protected works, but also entire repertoires of works. Technically driven measures are categorised as either location-based (i.e. applied to a specific copy of a digital asset as hosted in a particular location) or asset-based (i.e. applied to the digital asset more broadly and replicated in every copy of that asset).

Both approaches have their distinct advantages and limitations and rights owners often use a combination of measures.

However, these methods appear to give rights owners only the possibility to express their rights and not to enforce them. AI developers are responsible for respecting these choices and configure their tools accordingly. The study anticipates the development of sector-specific standard practices.

GenAI outputs

The study further explores legal concerns around AI-generated content, noting that output depends on the type of GenAI model and content type created. New tools such as watermarking and digital fingerprinting are helping identify synthetic content produced by GenAI systems and meet transparency requirements under the EU AI Act.

Standard technologies

There is a trend of increased deployment of Retrieval-Augmented Generation (RAG) technologies that combine GenAI with real-time data retrieval, often from copyrighted sources.

While RAG boosts the relevance and efficiency of the data drawn, it introduces legal uncertainty, especially around licensing and database rights, since it differs from traditional training covered by TDM rules. This is particularly the case if dynamic content is read via web scraping.

Technical and legal measures

Developers are adopting technical fixes to reduce the risk of copyright infringement in AI-generated content. These include:

• Tools for comparing generated content with potential input sources
• Filters to prevent duplicate outputs
• Prompt rewriting and negative prompting
• Differential privacy to prevent models from memorizing data
• Post-training tools such as “model editing” and “model unlearning” to remove or alter specific content

Prompt rewriting changes user inputs to prevent generating near duplicate outputs, while negative prompting also specifies to the model which elements should be excluded from the generation, such as key features associated with copyright-protected characters.

Some providers even offer some form of legal indemnification to users, reflecting the growing awareness of potential legal risks.

In this context it is noted that public bodies can help to mitigate potential infringing outputs and detect synthetic content by providing technical support and raising awareness on technical standards, promoting ethical AI use and support the interoperability of output transparency measures across platforms and GenAI systems. A joint approach – legal, technical, and institutional – is key to managing the risks of GenAI output.

Evolving direct licensing market

The study identifies a new market which is forming for direct licensing of copyright-protected content for AI training, driven by demand for high-quality datasets and concerns over future data availability. Press, scientific and academic publishing are early movers.

This market is enabled by the Article 4 DSM Directive opt-out mechanism, making it a copyright infringement for AI developers to use opted-out works that may be available for license.

A functioning licensing system requires strong opt-out mechanisms, which can provide new income streams for rights holders. This also creates a market for technical solutions for managing access to content (particularly in online settings) and administering TDM rights reservations.

The study further lists several key considerations that may affect the evolution of licensing practices. They will depend on benchmark market rates, metrics used for remuneration, legal frameworks for remuneration and compensation models.

Conclusion

Navigating the interaction of GenAI and copyright will require coordinated and forward-looking action. The study calls for technical standards, policy tools and collaboration to keep copyright law able to address the implications of large-scale AI adoption.

Institutions such as the EUIPO can support this through guidance, databases, and awareness initiatives.

The upcoming Copyright Knowledge Centre is a step toward that goal, but long-term success depends on continued cooperation among GenAI developers, policymakers and rights holders, in order to (re-)establish a balance between the creative and IT industries.

Gabriele Engels is a Partner with D Young & Co in Munich and Chair of the MARQUES Cyberspace Team