Protecting the sparkle: Trade marks and Champagne

Status Quo

It has long been recognised that the Protected Designation of Origin (or PDO) that is ‘Champagne’ can only be used, in the EU at least, in relation to sparkling wine which is produced in the specified manner from specific grapes in the specified zone in the north east of France. Likewise, Champagne’s distant Italian cousin, Prosecco, enjoys PDO status in the EU.

The PDO ‘Champagne’ was registered in the EU back in 1973.

EU legislation confers various rights on PDOs:

Under Article 103(2)(a) of EU Regulation No 1308/2013 of 2013 (the 2013 Regulation), a PDO protects against any use of the protected name:

• by comparable products not complying with the product specification of the protected name; or
• in so far as such use exploits the reputation of a designation of origin or a geographical indication

Article 102(1) of the 2013 Regulation provides that registration of a trade mark that contains or consists of a PDO which does not comply with the product specification concerned or the use of which falls under Article 103(2) shall be:

(a)      refused …; or

(b)      invalidated.’

Under Article 8(6) of Regulation 2017/1001 (Article 8(6)), those authorised under the relevant law to exercise the rights arising from a PDO can oppose an application where a PDO had already been registered in accordance with EU legislation or member state national law, before the filing/priority date of the opposed application, and the PDO confers the right to prohibit the use of a subsequent trade mark.

Background to case

In 2019 an Italian company, Nero Lifestyle Srl, applied to register NERO CHAMPAGNE as an EU trade mark for:

1. ‘wine complying with the specification of the protected designation of origin “Champagne”’ in Class 33;
2. various Class 35 services, including the sale of wine bearing the PDO ’Champagne’;
3. various education and publicity type services in Class 41, all relating to wine bearing the PDO ’Champagne’.

The EUTM application was opposed by the professional body of Champagne Producers (the Champagne Producers). The basis of the opposition was that, under Article 103 of the 2013 Regulation and article 8(6), the application should be refused because the Champagne Producers, as owners of the EU PDO ‘Champagne’, could prohibit use of the mark applied for.

The EUIPO’s opposition decision only upheld the opposition in respect of ‘sale, retailing and wholesaling, online sale and sale in shops of beer and non-alcoholic beverages” services in Class 35 and rejected it for all the goods and all other services. The Champagne Producers appealed that decision to the EUIPO’s Board of Appeal (BOA). The BOA decided to uphold the opposition against “Advertising; business management; business administration; office functions” in Class 35 which, notably, were not expressed as being limited to the sale of wine bearing the PDO ’Champagne’.  The BOA reversed the upholding of the opposition in respect of ‘sale, retailing and wholesaling, online sale and sale in shops of beer and non-alcoholic beverages” services in Class 35. In addition, the BOA maintained the rejection of the opposition against all the Class 33 goods and all the Class 41 services.

Appeal

The Champagne Producers appealed to the EU General Court (GC), requesting that all goods and that the other services in the application be refused or, alternatively, that the case be referred to another EUIPO BOA for reconsideration. Both France and Italy supported the Champagne Producers’ appeal. The applicant and the EUIPO asked that the appeal be dismissed.

The Champagne Producers alleged that the use and registration of the PDO ‘Champagne’ as a part of the opposed mark would divert the function of the PDO and would, as such, be contrary to Article 103(2)(a)(ii) of the 2013 Regulation read in conjunction with Article 8(6). They also alleged that the BOA had erred in finding that, because the disputed goods were  exclusively goods complying with the specifications of the PDO ‘Champagne’ and because the disputed services were all connected thereto, Article 103(2) of the 2013 Regulation did not apply and that such goods or services could not therefore exploit the reputation of the PDO, within the meaning of Article 103(2)(a)(ii) of the 2013 Regulation.

In addition, the Champagne Producers alleged that the Board of Appeal had breached both: (i) the obligation to state reasons as set out in Articles 263 and 296 of the Treaty on the Functioning of the European Union and in Article 94(1) of Regulation 2017/1001; and (ii) the principles of equal treatment and of good administration.

In its June 2025 decision [1] the GC outlined that the 2013 Regulation does not prohibit, as a matter of principle, a trade mark from containing or consisting of a PDO but that registration of such a mark is to be refused or invalidated only in two situations: first, if the PDO does not comply with the product specification concerned or, second, if its use falls under Article 103(2) of the 2013 Regulation, namely that it exploits the PDO.

The EUIPO argued that, in its examination of absolute grounds for refusal of trade marks that contain or consist of a PDO, what the Champagne Producers called the ‘limitation theory’ had been applied for many years. According to that theory, the objections raised on the grounds of PDO status, read in conjunction with Article 103 of the 2013 Regulation may be waived if the relevant goods are restricted to comply with the specifications of the PDO at issue. The EUIPO argued that it necessarily followed from the structure of Article 103(2)(a) of the 2013 Regulation that the concept of ‘exploit[ing] the reputation’ of a PDO set out in Article 103(2)(a)(ii) is limited, in the first place, or even exclusively, to situations in which the PDO is used for goods or services which are not comparable to those covered by the PDO in question.

According to the ‘limitation theory’ applied by the BOA in this opposition, it is presumed, in essence, that a mark which 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 specification of that PDO or in respect of services referring to such products.

The Court held that the BOA had made an error in law because it had overlooked that nowhere in the 2013 Regulation does it state that Article 103(2)(a)(ii) cannot apply to the use of a PDO in respect of products complying with the specification of that PDO.

The GC held that the BOA should, taking into account all the relevant circumstances in the present case, have carried out an analysis in order to assess whether the opposed mark exploited the reputation of the PDO ‘Champagne’, including whether the opposed mark sought to take undue advantage of the reputation enjoyed by the PDO.

In this case the Champagne Producers had made written submissions to the EUIPO indicating that the opposed trade mark was likely to exploit the reputation of the PDO ‘Champagne’. Those submissions covered (i) the outstanding reputation of the PDO ‘Champagne’; (ii) the argument that a service cannot, by definition, comply with the product specification of a PDO, with the result that the ‘limitation theory’ cannot apply to services; (iii) the reference to the fact that the mark applied for is a word mark, which can therefore be used in many different ways on the market, including in a manner contrary to the objectives of the PDO; (iv) arguments claiming, in essence, that the Italian term ‘nero’ qualified the word ‘champagne’ within the mark applied for; and (v) the arguments relating to the labelling of the goods marketed by Nero Lifestyle. The Champagne Producers had argued that the term ‘nero’, which means ‘black’ in English, could be perceived by the relevant public either as an indication of the colour of the wine or as an indication of the grape variety of that wine, indicating e.g. that that wine is produced from black grapes only, or contains a greater quantity of the ‘pinot noir’ grape variety. Thus, the words ‘nero champagne’ could be understood as meaning ‘black champagne’ and as referring to a new variety of champagne, even though it is clear from the PDO specification that Champagne wine can only be white or rosé. In its decision the BOA has only examined one of these elements.

The GC held that, regardless of the merits of these submissions by the Champagne Producers, by merely stating that ‘there is no evidence that use of the mark [applied for] falls under Article 103(2)’, the BOA had breached its obligation to state reasons by not sufficiently explaining how the elements produced by the Champagne Producers were not capable of overturning, in the present case, the presumption that the PDO would not exploit the PDO.  The GC further held that the BOA was required to find, following a global assessment of the evidence provided by the Champagne Producers, that that evidence 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 the 2013 Regulation.

The GC upheld the opposition against all goods and services applied for.

The GC held that, in general, it can be presumed that a trade mark that contains or consists of a PDO, registered solely in respect of products complying with the specification of that PDO or for related services, will not unduly exploit the reputation of that PDO, within the meaning of Article 103(2)(a)(ii) of the 2013 Regulation, since it will only be deemed to be used, on the market, in respect of products complying with the quality standards relating to that PDO or in respect of services relating to such products. Therefore, the objective of protecting the quality of goods covered by a PDO pursued by the 2013 Regulation is presumed to be fulfilled in that situation.

Importantly the GC clarified that such a presumption may, however, be overturned when it can be demonstrated, on the basis of concrete, substantiated and consistent elements, that a given trade mark is likely unduly to exploit the reputation of a PDO, even if it only covers products complying with the specification of that PDO or related services. Thus, when such elements are brought to the attention of the adjudicating bodies of EUIPO, those bodies must examine them in order to ascertain whether they allow that presumption to be rebutted.

Take-away points

Registration of a mark containing a PDO may be refused if the product exploits the reputation of the PDO or if the mark applied for conveys a false or misleading indication as to the provenance or origin of the product.

An application for an EUTM containing a PDO may be successfully opposed even where the application solely covers goods complying with the PDO.

Existing registered EUTMs containing PDOs may now be challenged following this decision.

David Birchall is a member of Marques Geographical Indications Team.