The webinar “Conflicts between wine DOs, GIs and trademarks” was developed on October 26, 2017. The speakers in charge were Ms. Patricia Pais Leite from the legal department of the Viticulture Commission of the Vinhos Verdes Vitivinicola and Mr. Joao Pimenta, lawyer with expertise in Intellectual Property.
I. CONFLICTS BETWEEN WINE DO AND GI AND TRADEMARKS (Mr. Joao Pimenta)
At first, Mr. Pimenta explanation was focused in DOs and GIs rules of supremacy and also the exceptions. For instance, he explained the amendments of the EU regulation to solve the conflicts between wine DOs, GIs and trademarks.
a. The rule of supremacy of wine DOs and GIs.
The Designation of Origin (DO) and Geographical Indication (GI) are mandatory indications, but these two kinds of industrial property rights do not always coexist peacefully.
In principle, in a conflict between wine DO, GI and trademarks, the DO and GI shall prevail. Conflicting trademark must respect protected wine DO or GI, except in the following two specific situations of earlier trademarks: i) The coexistence of the two kinds of rights; and, ii) The refusal of a later DO or GI.
Trademarks who contains or consist in a DO or GI or its use is an abusive practice, could be classified as a trademarks that are identical with a wine DO or GI, a trademark that are formed by a wine DO or GI or trademarks that are confusingly similar to a wine DO or GI.
CMO has contrary provisions. First of all, it establishes that a trademark which takes advantage of the reputation of the DO or GI must be rejected or considered invalid, but in another provision, it excludes similar products and products not established in the CMO trademark, which takes advantage of the DO or GI reputation.
The legal regime governing the conflict between DO, GI and trademarks, has been evolving in accordance with the synchronization with trademarks rules.
It is important to note that the local regime will apply when there arises a conflict between wine DO, GI and national trademarks in countries that do not belong to the EU.
- Trademarks that are identical with a wine DO or GI: Trademarks with DO or GI are powerful “marketing weapons”, because they operate in the market as an indication of origin and also could influence the consumer’s decision. IPC and EU Trade Regulation (EUTR), prohibits the appropriation of a DO and also, repress false indication of origin. The exception of the above mentioned rule is when the GI acquires a secondary meaning.
In case of wine products, trademarks with geographical names should not be allowed, even if they have gained distinctive character or if they are not associated with the GO.
- Trademarks that contain a wine DO or GI: Those are nominative or figurative trademarks plus a wine DO or GI. The nominative or figurative element confers the trademark the distinctive character to be an exclusive right, but it is important to bear in mind that third parties may register trademarks that contain DI or GO which are not confusingly similar with the previous one.
It is important to note that trademarks composed by wine DO and GI must comply with the principle of truthfulness and cannot identify other products than those that represent.
A trademark registration will be refused if: i) it is formed only by DO or GI, ii) it is a trademark formed by a wine DO or GI which can be used on products originating from the production area of the DO or GI; and iii) for identical or similar products to those that are identified by the DO or GI, but are not allowed.
- Trademarks confusingly similar to a wine DO or GI: Trademarks confusingly similar to a wine DO or GI, implies the following requirements: i) The signs bear graphics or conceptual similarities; and ii) Trademarks that easily misleads or confuse consumers (in some cases encourage them) in regard to the DO, GI or nature/qualities of the product meant to be covered.
The confusion shall exist, as long as the products identified by the trademark do not comply with the specifications of the DO or GI.
Evocation is an important concept and, even the only one, for those DOs or GIs confusingly similar trademarks.
- Exceptions to the supremacy of wine DOs and GIs.
There are two exceptions to the supremacy of wine DOs and GIs: i) The existence of a previous trademark, provided that the trademark has a better reputation and is better well-known than the other one and the name to be protected as DO or GI confuses consumers about the real identity of wine; and ii) The coexistence of a wine DO or GI with a conflicting prior trademark[1] which does not fulfill the grounds for invalidity or revocation.
b.The articulation between Industrial Property Law and Wine Law.
Rules that govern the relationship between wines DO and GI and trademarks have existed in wine sector since late 80s. With the overcome of the years, law has been solving problems between Industrial Property Law and Wine Law.
UE legislation is composed by Regulation (EU 2015/2424) and Directive (EU 2015/2436). Both rules has a common objective that are to promote innovation and economic growth and make the trademark registration system in the whole EU more accessible and efficient to companies through the reduction of costs, complexity and becoming the process more predictable and of legal certainty.
- The solution in the EU trademark law: The Regulation EU 2424 brings significant amendments.
One of the most important is article 7 that was modified in the sense that it refuses the trademarks registrations which are included in the exception indicated in point d) of this document. This reformulation clarifies that the DO or GI constitutes a solid motive for refusal of EU trademarks and also eliminates remaining doubts related with the applicable legislation (EU legislation). This article clarifies that the EUTMR covers trademarks identical with wine DO or GI, trademarks formed by wine DO or GI and trademarks confusingly similar.
Secondly, article 8 states another relevant amendment related with grounds for refusal. Now, DOs and GIs are indicated as an specific and separate relative grounds for refusal, this allows to make more effective the defense of wine DO and GI against trademarks in opposition or invalidation proceedings.
Finally, article 53 establishes an amendment concerning to grounds of invalidity. This provision specifies that, an EU trademark shall be declared invalid when there is an earlier DO or GI, as referred in article 8.
- The solution in national trademark laws-Directive (EU 2015/2436): The EU 2436 Directive moves closer some rules of the national registration systems with the rules of the trademark registration system of the EU with the purpose of standardize substantive and procedural aspects. The above, in accordance with the new provisions introduced in the EUTMR.
In addition, the above mentioned Directive imposes obligations in the administrative procedures for Member States. These provisions are very important for the protection of DO and GI.
II. A FRESHER WINE “ALL YOU NEED TO KNOW ABOUT VINHO VERDE” (Ms. Patricia Pais Leite).
Ms. Pais explanation was focused in Vinho Verde DOs and the regulation stated by the Viticulture Commissions of the Vinho Verde Region.
In that sense, Ms. Pais explains that the Viticulture Commission of the Vinho Verde Region is an association in private law that can be regarded as the certifying body with authority in the region to validate products and promote, protect and supervise the DOs. Also, council No. 297/2008, designated the CVRVV as the certifying body responsible for supervising the production, sale and certification of viticulture products permitted to use the “Vino Verde” DO and “Minho” GI.
She mentioned that “Vinho Verde” in employed in the following product categories: i) White, red and rose wine, designated “Vinho Verde”; ii) White, red and rose sparkling wine, designated “ Espumante de Vinho Verde”, iii) Vinous spirit and grape marc spirit, designated “ Aguardiente Vinica de Vinho Verde” and “Aguardente Bagaceira de Vinho Verde” respectively; iv) White, red and rose wine vinegar, designated “Vinagre de Vinho Verde”. The Controlled Designation of Origin is the specific indication traditionally used in the presentation (labeling) and advertising of wine products which are entitled to use a DO.
Secondly, she mentioned that GI is the name of a country, region, specific place or a traditional geographical or non –geographical name, used to describe or identify a wine product. A GI can be employed for the following products: Wines, Sparkling wines, Semi-sparkling wines, Liqueur wines, Vinous spirits and grape marc spirits, wine vinegar.
The Minho GI must be exclusively obtained from grapes from the production area defined by Ordinance No. 379/2012. This area coincides with the area of production of the Vinho Verde DO (Demarcated region).
Regarding the following, she remarked that, in order to certify with the Vinho Verde DO, the wine must comply with the requirements set out in the EU regulations, Portuguese national legislation and the regulations of the region itself.
In the case of Minho GI award implies compliance with the requirements defined in the Common Organization of the Market in Wine (Community Law), in the national legislation, as well as specific regulations of the region itself.
Finally, she states that the production area for the Vinho Verde DO and the Minho GI (Demarcated Region) , corresponds to the geographical area of the designation of origin that the CVRVV is responsible for certifying. The current region extends across the whole of northwest of Portugal, in the region traditionally known as “Entre- Douro-e-Milho”.
_______________
[1] Prior trademarks are those whose applications or registrations are filed earlier than the date of protection of the DO or GHI in the original country or earlier than their first anniversary.
View recording
