Case C 783/19 concerns a reference for a preliminary ruling from the Audiencia Provincial de Barcelona to the Court of Justice in the proceedings between the Comité Interprofessionnel du Vin de Champagne (CIVC) and GB concerning infringement of the protected designation of origin (PDO) “Champagne”.

Background to the dispute

GB has tapas bars in Spain and uses the sign CHAMPANILLO to designate and promote them on social networks and in advertising leaflets. In addition, it associates with that sign a graphic support representing two glasses filled with a sparkling drink and clinking together.

 Taking the view that the use of the sign CHAMPANILLO constituted an infringement of the PDO ‘Champagne’, the CIVC brought an action before the Barcelona Commercial Court seeking an order that GB be ordered to cease using the sign CHAMPANILLO.

In its response, GB argued that the use of the sign CHAMPANILLO as a trade name for catering establishments did not entail any likelihood of confusion with the products protected by the PDO ‘Champagne’ and that it had no intention of taking advantage of the reputation of that PDO.

The Barcelona Commercial Court dismissed the CIVC’s action. It held that GB’s use of the sign CHAMPANILLO did not constitute an evocation of the PDO ‘Champagne’ on the ground that that sign did not designate an alcoholic beverage, but rather premises engaged in hotel and catering activities – in which champagne is not sold – and, therefore, products other than those covered by the PDO, aimed at a different public, and did not therefore infringe the latter designation.

The CIVC appealed the judgment of the Barcelona Commercial Court to the Barcelona Provincial Court. That court has doubts as to whether these provisions protect PDOs against the use in trade of signs which do not designate goods but services. In that context, the Audiencia Provincial de Barcelona stayed the proceedings and referred questions to the Court of Justice for a preliminary ruling.

The Court’s decision

As regards the first question referred for a preliminary ruling, the Court points out that designations of origin are protected for both goods and services.

Secondly, the second and third questions referred for a preliminary ruling must be answered by stating that the concept of ‘evocation’ does not require that the product covered by the PDO and the product or service covered by the contested name be identical or similar. For the CJEU, the essential requirement for establishing the existence of an evocation is that the consumer establishes a clear and direct link between the term used to designate the product in question and the protected name.

The existence of such a link may result from several factors, in particular the partial incorporation of the protected name, the phonetic and visual similarity between the two names and the similarity resulting therefrom, or, even in the absence of such factors, from the conceptual proximity between the PDO and the name in question or even from a similarity between the products covered by that PDO and the products or services covered by that name.

With this judgment, the CJEU leaves it to the Spanish court to take into account all the relevant elements in order to decide whether there is a link of evocation between the PDO “Champagne” and the use of the term CHAMPANILLO as a trade mark to distinguish catering establishments.

JUDGMENT OF THE COURT (Fifth Chamber) of 9 September 2021. Case C 783/19