Publication date: 14/01/2021
On 21 December 2020, the Opposition Division of the EUIPO rejected the registration application for the ‘CHAMPAWS’ trade mark for pet beverages because it evoked the ‘CHAMPAGNE’ PDO. This decision expressly confirms that Article 103(2)(b) of Regulation No 1308/2013 also applies where the goods that are protected by the trade mark and by the PDO are not comparable.
The decision can be found here.
Champaws, the Champagne for pets
Christmas and the New Year are the perfect time to enjoy a glass of Champagne with family and friends or, given the circumstances of this year, with your (social) ‘bubble’. So why not let your pets be a part of the festive celebrations too? That is what Woof and Brew, a UK company, has been offering by marketing a wide range of alcohol-free festive drinks for pets.
For this purpose, the company filed, on 4 July 2019, the international trade mark ‘Champaws’ for pet foods and pet beverages (Class 31), designating, amongst others, the European Union. The product commercialised under that trade mark was a liquid treat for pets in a sparkling wine style bottle.
Evocation of the ‘Champagne’ PDO
The CIVC (Comité Interprofessionnel du Vin de Champagne) and the INAO (Institut National de l’Origine et de la qualité) lodged opposition proceedings against the registration of ‘Champaws’ on the basis of Article 8(6) EUTMR. They considered that the ‘Champaws’ sign amounted to an evocation of the Protected Designation of Origin (‘PDO’) ‘Champagne’ in the sense of Article 103(2)(b) of Regulation No 1308/2013.
It follows from the CJEU’s case-law that the concept of ‘evocation’ covers a situation in which the term used to designate a product incorporates part of a PDO, so that when a consumer is confronted with the name of the product the image triggered in his/her mind is that of the product whose designation is protected. In assessing whether consumers would establish a sufficiently clear and direct link between the ‘Champaws’ trade mark and the ‘Champagne’ PDO, the EUIPO’s Opposition Division considered all factors relevant to the circumstances of the case, such as:
- The applicant’s intentions
The product marketing material bearing the ‘Champaws’ trade mark abundantly referred to the ‘Champagne’ PDO’s intrinsic characteristics of: a sparkling wine style bottle, the terms used (such as “bubbles”), images of wine glasses, champagne buckets, etc. Consequently, the Opposition Division found that the image of prestige and luxury, festivities and glamour of Champagne wines was clearly being used by the applicant to promote its goods.
- The degree of closeness between the goods at issue
In its decision, the Opposition Division recalled that the protection granted to PDOs is not only intended to enable consumers to make more informed purchasing choices but also to prevent uses that take advantage of the reputation enjoyed by complying products and to promote fair competition. Therefore, the Opposition Division pointed out that, even if pet beverages and wines are not identical products, a certain proximity could not be denied, which was reinforced by the marketing material referring to ‘Champagne’.
- The degree of visual, phonetic or conceptual similarity between the conflicting signs
‘Champaws’ and ‘Champagne’ coincide in their first six letters. Since consumers generally tend to focus on the start of words, the signs are visually and aurally similar to a high degree. On the other hand, there is no conceptual similarity between the signs, but this does not offset the visual and phonetic similarities as the word “paws” is clearly linked to the relevant goods for pets. ‘Champaws’ would thus be construed as referring to a foodstuff or drink for pets.
From the above, the Opposition Division has given victory to the CIVC and the INAO and rejected the registration application for the ‘Champaws’ trade mark.
Extension to non-comparable products?
Unlike Article 103(2)(a) of Regulation No 1308/2013, Article 103(2)(b) does not specify whether the scope of protection of PDOs against evocation is limited to comparable goods or also extends to non-comparable products and services.
It seems clear that the goods concerned in this matter were not “comparable” within the meaning of Article 103(2)(a). While the Opposition Division stated in its decision that “a certain proximity could not be denied”, this does not mean that it considered the products at issue to be “comparable”. Moreover, the “proximity” between the products was examined in the context of the assessment of “evocation”, i.e. of whether the contested sign ‘Champaws’ would trigger the image of Champagne wine in the average consumer’s mind; it was not raised in the framework of the assessment of whether the scope of protection of PDOs against evocation should be limited to comparable goods only.
It should be noted that the EUIPO’s Fourth Board of Appeal had already come to the conclusion recently, in the Champagnola case, that the scope of protection of PDOs against evocation was not limited to comparable products.
Even though the CJEU has not been directly asked to examine that issue yet, it has nonetheless been asked, in the Champanillo case (Case C-783/19), to address the question of whether the scope of protection of PDOs for wine extends beyond comparable goods and also covers services that may be linked to the distribution of such goods (i.e. catering). The Court’s response to this question is expected in the near future.