The decision is a powerful reminder of the strong protection afforded by both protected designations of origin and geographical indications, especially for food, wines and spirits. They guard against any business that may be tempted to seek to use (or to register) these protected terms, without entitlement, to offer for sale "equivalent" or look-a-like products, or trade off the badge of quality and reputation of goods legitimately using these protected terms.
On 25 June 2025, the EU General Court delivered a judgment in favour of the Comité Interprofessionnel du Vin de Champagne (CIVC) in a case concerning an EU trade mark application for the mark NERO CHAMPAGNE, filed by the Italian Company Nero Lifestyle. The judgment follows a six-year long dispute between the parties as to whether use of the Protected Designation of Origin ("PDO") "Champagne" in combination with the mark "Nero" exploited the reputation of the PDO.
Protected Designations of Origin:
PDOs are EU certifications that identify and protect the names of agricultural products and foodstuffs originating from specific regions, whose quality and characteristics are essentially or exclusively due to their geographical origin and local know-how. Well-known examples of PDOs include Champagne, Tequila, Parmigiano Reggiano, Jersey Royal Potatoes, and Prosciutto di Parma.
The PDO for Champagne was registered in 1973, covering white and rosé sparkling wines of 9%-13% ABV strength, manufactured according to specific oenological practices, within the Champagne region of France. The full wine-making process - from grape to bottle - must occur within this region in order for a sparkling wine to be labelled "Champagne". Protection of the Champagne name and its reputation is enforced by the CIVC.
Trade marks containing or consisting of a PDO may be registered as trade marks in the EU, subject to certain conditions laid out in Articles 102 and 103 of Regulation No. 1308/2013 (the "Regulation"). Specifically, if the registration of a trade mark that contains or consists of a PDO does not comply with the product specification concerned then the trade mark will be refused or invalidated (Art 102(1)). In addition, Article 103 provides that PDOs may be used by any operator marketing a wine that has been produced in conformity with the corresponding product specification, but that the PDO shall be protected against any direct or indirect use thereof, insofar as such use exploits the reputation of the PDO (including any misuse, imitation or evocation) (Art 103(2)).
Background to the case:
On 19 February 2019, the Italian company Nero Lifestyle applied to register the word mark NERO CHAMPAGNE as an EU trade mark for goods in Class 33 and services in Classes 35 and 41. The registration was opposed by French PDO regulators the CIVC and the Institut national de l'origine et de la qualité (INAO), citing exploitation of the reputation of the PDO and false or misleading indications as to the essential qualities of the product.
In a hearing in February 2022, the Opposition Division of the EUIPO partially upheld the opposition, preventing the trade mark registration with respect to the sale, retailing and wholesaling of beer and non-alcoholic beverages, but rejected the opposition with respect to other goods and services in the application.
The case subsequently made its way to the Board of Appeal ("BoA") which upheld the opposition with respect to goods and services that did not comply with or were unrelated to the specifications of the PDO. However, the BoA rejected the opposition in respect of goods that did comply with or were related to the PDO.
This latest decision concerns an appeal field by the CIVC and INAO, with support from the French and Italian governments and oriGin, against the BoA's decision.
Key issues and deciding factors:
The dispute centred on the so-called "limitation theory". This theory presumes that a trade mark incorporating a PDO cannot, in principle, exploit the reputation of that PDO, if the mark is registered exclusively for products that comply with the PDO's specifications or for services related to such compliant products.
The Grand Court considered that the BoA's application of the theory lacked clarity and that it allowed for two possible interpretations: (1) it may operate as a non-rebuttable presumption that the reputation of the PDO is deemed not to be exploited when the trade mark designates compliant products and related services; or (2) that the theory proposes a rebuttable presumption, which can be overturned with concrete evidence that the trade mark is likely to exploit the PDO's reputation.
Accepting the latter interpretation, the Court held that compliance with PDO specifications alone is insufficient to conclude that a trade mark does not exploit the reputation of the PDO. A case-by-case analysis of the relevant circumstances is required to determine whether the applied-for mark exploited the reputation of a PDO. It followed that by applying the first reading, the BoA had made an error of law.
The Court acknowledged a range of arguments advanced by the applicants in support of their case that NERO CHAMPAGNE exploited the PDO's reputation, including: the outstanding reputation of the PDO; the fact that the contested mark is a word mark which could be used in many different ways in the market; and the qualifying nature of the term "nero" (black) in relation to Champagne. The term "nero" was highlighted as being associated with several well-known Italian grape varieties, such as "Nero d'Avola" and "Nero Buono," and even formed part of the names of Italian PDOs like "Pinot Nero dell'Oltrepò Pavese" and "Castel del Monte Bombino Nero." It was also noted that the Italian-speaking public would understand "nero" to mean "black," referring to the colour of the wine. The Court considered that this could lead the public to mistakenly believe that the product is a new variety of Champagne, specifically "black Champagne," despite the fact that, under the PDO specifications, Champagne can only be white or rosé. Accordingly, the mark applied for may be perceived as "conveying a false meaning or misleading indication" within the meaning of Article 103(2)(c) of the Regulation.
The Court altered the BoA's decision accordingly and annulled the Opposition Division's decision, to the extent that it had dismissed the opposition.
Evidently, applying to register trade marks which incorporate PDOs carries with it a significant risk of objection even where the application is limited to products which comply with the PDO's specification. Brand owners should be mindful of the provisions of Article 103 of the Regulation to ensure that they avoid allegations of exploiting the reputation of the PDO they wish to use.
Six years on, this dispute may be the subject of one final appeal up to the Court of Justice of the European Union. Nero Lifestyle will have until 25 August 2025 to apply for permission to appeal, should they decide to pursue this option.
