Wine marks, just like any marks, for being registered as European Union trademarks (EUTMs), must avoid several grounds for refusal provided for in the EUTM Regulation (EUTMR). Those grounds include lack of any distinctive character, being descriptive, contrary to public policy or accepted principles of morality, deceptive, consisting or reproducing earlier trademarks or designations of origin or geographical indications.
If these grounds for refusal are, in abstract, applicable to any marks, there is one specific for wine marks laid down in Article 7, No. 1, paragraph (k) of the EUTMR, providing that any EUTM application shall be refused if it conflicts with a traditional term for wine. This article will address the particularities of getting an EUTM registration for wine due to this ground for refusal.
The rule
The conflict with a traditional term for wine is an absolute ground for refusal, providing the Article 7, No. 1, paragraph (k) of the EUTMR that: “The following shall not be registered: (…) (k) trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional terms for wine; (…).”
What are traditional terms for wine?
Traditional terms for wines are protected in the EU by Council Regulation (EU) No 1308/2013, in Chapter III of Commission Implementing Regulation (EU) 2019/34 and in Chapter III of Commission Delegated Regulation (EU) 2019/33 (1). Article 112 of Council Regulation (EU) No 1308/2013, defines them as a “term traditionally used in a Member State to designate:
(a) that the product has a protected designation of origin or a protected geographical indication under EU or national law; or
(b) the production or ageing method or the quality, colour, type of place, or a particular event linked to the history of the product with a protected designation of origin or a protected geographical indication.”
According to the EUIPO’s Guidelines for trademarks1, said paragraph (a) refers to a traditional term for wine which is used in addition to the reference to a protected designation of origin (PDO). EUIPO provides the following examples: “‘appellation d’origine contrôlée (AOC)’, ‘denominación de origen protegida (DO)’, ‘denominazione di origine controllata (DOC)’, ‘Landwein’) or a protected geographical indication (PGI) (‘Vin de Pays’, ‘Vino de la Tierra’, ‘Indicazione Geografica Tipica’, ‘Vinho Regional’, ‘Landwein’).”
In paragraph (b) a traditional term for wine is used as an indication of product characteristics such as production or ageing methods, quality, colour, type of place, or for a particular event linked to the history of the product with a PDO or PGI. In relation to this paragraph EUIPO provides the following examples: ‘château’, ‘grand cru’, ‘añejo’, ‘clásico’, ‘crianza’, ‘riserva’, ‘fino’, ‘Federweisser’.
In conclusion, also following the EUIPO Guidelines, traditional terms for wines are expressions that provide information to consumers about the particularities and the quality of wines, in principle complementing the information conveyed by PDOs and PGIs.
Which traditional terms for wine are relevant?
Only registered traditional terms for wines are relevant for the application of Article 7, No. 1, paragraph (k) of the EUTMR. For registered traditional terms for wines, it should be understood as those registered in compliance with Council Regulation (EU) No 1308/2013, Commission Implementing Regulation (EU) 2019/34 and Commission Delegated Regulation (EU) 2019/33.
The relevant traditional terms for wines can be searched at the eAmbrosia database.
Another requirement for a traditional term for wines to be relevant as absolute grounds for refusal is that its registration is applied for before the application for the EUTM in conflict.
The conflicts between relevant traditional terms for wines and trademarks
Traditional terms for wines are not designations of origin nor geographical indications and their scope of protection is narrower than that of those. They are protected only in the language and for the categories of grapevine products claimed in the application for protection, as provided by Article 113(2) of Council Regulation (EU) No 1308/2013.
The main rule governing the relation between relevant traditional terms for wines and trademarks is provided by Article 32 of Commission Delegated Regulation (EU) 2019/33:
“1. The registration of a trade mark that contains or consists of a traditional term which does not respect the definition and conditions of use of that traditional term as referred to in Article 112 of Regulation (EU) No 1308/2013 , and that relates to a product falling under one of the categories listed in Part II of Annex VII thereto shall be:
a. refused if the application for registration of the trade mark is submitted after the date of submission of the application for protection of the traditional term to the Commission and the traditional term is subsequently protected; or
b. invalidated. (…)”
Applying this rule, an EUTM application shall not be rejected by merely including a traditional term for wine. An absolute ground for refusal will exist only if there is the possibility of misuse or false / misleading use of the traditional term for wines that is already protected.
As the EUIPO’s Guidelines stress2, several protected traditional terms for wines are terms with various meanings not related to wine, such as “Noble”, “Clasico” or “Reserva”. Therefore, it shall be assessed whether a protected traditional term for wines included in a sign will be linked by the relevant public with certain qualities or characteristics of the wine or not.
For reference, EUTM application No. 17476656 – CHÂTEAU MUSAR was objected by the EUIPO because “CHÂTEAU is, inter alia, a historical expression related to a type of area and type of wine, and is reserved for wines originating from an estate that actually exists and/or has the exact word in its name. The relevant public will link the term ‘château’ in the sign with the traditional term ‘Château’. The TM is therefore objectionable.”3
On the other hand, EUTM No. 015102015 - MONTSENY RESERVA DE LA BIOSFERA was not objected as “Reserva’ is not only a TTW but also has, in the present case, another meaning, which has no obvious link with the TTW: in the EUTM application, combined with the word ‘biosfera’, ‘reserva’ clearly refers to a ‘natural space’. Note also that the sign does not refer expressly to a wine. In light of the above, the expression ‘RESERVA DE LA BIOSFERA’, read as a whole, constitutes a logical and conceptual unit, in which ‘RESERVA’ is qualified by the other terms: ‘DE LA BIOSFERA’. There is no direct link being made with the TTW ‘RESERVA’ as clearly the term will not be identified as providing information on the quality of wine. Moreover, the structure of the sign [which was a figurative sign with word elements] confirms that ‘reserva’ is not used in isolation or in a different typeface or size.”4
Another requirement for the existence of an absolute ground for refusal based on a TTW is that the EUTM is applied for relevant goods. Article 113(2) of Council Regulation (EU) No 1308/2013 refers to “categories of grapevine products claimed in the [TTW] application,” and Article 32 of Commission Delegated Regulation (EU) 2019/33 refers to a product falling under one of these categories.
This is interpreted by the EUIPO5 as meaning that objections cannot be raised based on comparable goods (unlike Protected Geographical Indications), but only on relevant products. Article 92(1) of Council Regulation (EU) No 1308/2013 provides that rules on traditional terms are applicable to wine, liqueur wine, sparkling wine, quality sparkling wine, quality aromatic sparkling wine, semi-sparkling wine, aerated semi-sparkling wine, partially fermented grape must, wine from raisined grapes, and wine of overripe grapes. Being all “these products wine - based and in view of the fact that most of the EUTM applications applied for are for wines without any specification of category, objections should be raised against any relevant product referred to in Article 92(1) of Council Regulation (EU) No 1308/2013 . For instance, in the event of an EUTM application containing the TTW ‘Fondillón’, for wine in Class 33, the objection should be raised not against wine of overripe grapes that is protected by the TTW, but against wine as such (e.g. 'Fondillón' (TTW) wine).”6
The solution
The solution for EUTM applicants to overcome an objection raised by the EUIPO based on traditional terms for wines is similar to that often used in relation to objections based on PGIs. Despite there are not specifications for traditional terms for wines (as it happens with GIs) eAmbrosia search tool includes a “summary of definition/conditions of use”. Therefore, the applicant facing such an objection shall restrict the relevant goods in a way that respects the definition/conditions of use of the traditional terms for wines in question, preferably using the EUIPO’s recommended wording: ‘‘[traditional term]’ (TTW) [product]’. Other wordings are, however, acceptable if the applicant clearly identifies the traditional term for wines and use thereof7.
Therefore, an EUTM application will only be refused based on this absolute ground if the following conditions are met:
1. It includes a TTW;
2. The TTW is relevant because it is registered;
3. The application date for the registration of the TTW is prior to that of the EUTM;
4. The EUTM covers relevant goods;
5. The TTW is used in the sign in a way that a misuse or false / misleading use of the traditional term for wines is possible;
6. The relevant goods in the EUTM application are not limited to respect the definition/conditions of use of the traditional terms for wines in question.
About the author:
João Pereira Cabral is a Trademark and Patent Attorney and Legal Manager at Inventa, working in advising national and international clients on obtaining, managing, and protecting intellectual property assets. He is based in Lisbon, Portugal. Email: jcabral@inventa.com
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1https://guidelines.euipo.europa.eu/2058843/2068042/trade-mark-guidelines/2-1-definition-of-ttws-under-eu-regulations.
2 https://guidelines.euipo.europa.eu/2058843/2068046/trade-mark-guidelines/4-relevant-provisions-governing-conflicts-provisions-governing-conflicts-with-trade-marks-trade-marks
3 Idem.
4 Idem.
5 https://guidelines.euipo.europa.eu/2058843/1952713/trade-mark-guidelines/5-relevant-goods.
6 Idem.
7 https://guidelines.euipo.europa.eu/2058843/1952095/trade-mark-guidelines/5-1-restrictions-of-the-list-of-goods