"NERO CHAMPAGNE" rejected: the EU General Court protects the PDO "Champagne"
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By judgment of 25 June 2025 (case T-239/23), the General Court of the European Union (GC) upheld the appeal of the Committee interprofessional du vin de Champagne (CIVC) and the Institut national de l'origine e de la qualité (INAO) against the application for registration of the word trademark “NERO CHAMPAGNE” which had been filed by the Italian company Nero Lifestyle Srl. The application covered, among other things, wines compliant with the specifications of the PDO “Champagne” (Class 33), sales services for such wines (Class 35) and cultural and promotional activities related to them (Class 41).
The decision clarifies the scope of protection for PDOs, although it focuses on Articles 102 and 103 of EU Regulation No. 1308/2013, relating to PDOs for wine products, which are no longer in force. These provisions, in fact, have now been replaced by Articles 31 and 26 of EU Regulation No. 1143/2024, which would appear to entail a modification of the protection outlined in the decision under comment; but I will return to this later.
Article 102(1) of EU Regulation No. 1308/2013 established that a trademark containing a PDO could not be registered if:
a) the product did not comply with the PDO specifications; or
b) the use of the trademark fell within one of the hypotheses prohibited by art. 103(2).
Article 103(2), on the protection conferred to PDOs, prohibited, among other things:
the commercial use of the protected name “in so far as such use exploits the reputation” of the PDO (103(2)(a)(ii));
any “false or misleading indication” as to the origin, nature or essential qualities of the product (103(2)(c)).
In short, according to the appellants CIVC and INAO, the application for registration of the NERO CHAMPAGNE trademark fell under both prohibitions. They therefore challenged before the GC the decision of the EUIPO Board of Appeal rejecting their opposition to the application for registration.
The Board of Appeal had argued that, since the trademark applied for was for products compliant with the PDO specifications, there would be no undue exploitation of the reputation of the PDO pursuant to art. 103(2)(a)(ii) of Regulation (EU) No. 1308/2013. Essentially, it held that a presumption of lawfulness of use of the PDO existed when the trademark exclusively concerned products covered by the PDO; this, in accordance with the so-called "limitation theory" expressed in the EUIPO guidelines, according to which the opposition to a trademark application containing the PDO must be rejected if it is limited to products compliant with the PDO.
In the decision at issue, the Court clarified that this presumption of lawfulness is not absolute but relative, and therefore rebuttable in the presence of evidence to the contrary. The Commission should therefore have specifically assessed whether the use of the word "Champagne" in the applied-for trademark was intended to unduly exploit the PDO's reputation, which, according to the General Court, was not apparent from the grounds for the decision. Therefore, the ground of opposition was upheld, and the Commission's decision was annulled.
The Court also upheld the objection based on Article 103(2)(c) of the Regulation, which prohibited the use of misleading indications. According to the decision in question, in fact, the combination "NERO CHAMPAGNE" could be mistakenly interpreted by consumers as an indication:
a) of the fact that the specific Champagne was made with only one of the three grape varieties used to produce Champagne, namely Pinot Noir (which, however, is only rarely the only grape variety used, and leads to the “blanc de noirs” Champagne); or
b) of a new “black” variety of Champagne, although the PDO specifications only provide for white or rosé types.
For these reasons, the General Court not only annulled the decision of the EUIPO Board of Appeal, but also directly upheld the ground for opposition based on art. 103(2)(c), being able to do so pursuant to art. 72(3) of EU Regulation no. 2017/1001, and therefore in practice upheld the entire opposition.
As previously noted, it remains to be seen what the practical use of this decision will be with reference to its conclusions on art. 103(2)(a)(ii), as this has now been replaced by art. 26(1)(a) of the new EU Regulation no. 1143/2024. This, in fact, unlike the previous one, states that commercial use that exploits the PDO is prohibited only "for products not covered by the registration", i.e. not compliant with the PDO. A literal interpretation of this provisions therefore seems to entail that the registration of a trademark containing the PDO for products covered by the PDO is excluded from that prohibition.
