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7 December 2018Trademarks

CJEU rules against Portuguese wine trademark

Europe’s highest court has ruled that a trademark registration that describes a geographical location and facility where wine products are produced must be refused.

The ruling, by the Court of Justice of the European Union (CJEU) yesterday, December 6, comes six years after winery J Portugal Ramos Vinhos first brought an application to cancel several national trademarks of rival company Adega Cooperative de Borba.

One of these was for the mark ‘adegaborba.pt’, which designated the company’s wine products.

The application to cancel the trademark was dismissed at first instance by the Intellectual Property Court, Portugal and, on appeal, by the Lisbon Court of Appeal.

Both courts maintained that the mark ‘adegaborba.pt’ is a distinctive term in the wine sector and one which the public associated with wines produced by Adega Cooperative de Borba, as it is currently the registered domain name for the company.

J Portugal Ramos Vinhos appealed against the decision of the Lisbon Court of Appeal and the case was referred to Portugal’s Supreme Court, which stayed the proceedings and referred the case to the CJEU.

In its referral, the Supreme Court asked the CJEU to rule on whether the trademark should be cancelled on the basis that it contains a term which is regularly used to describe a facility in which wine or wine products are produced and is also one of the word elements comprising the business name of the registrant.

The CJEU ruled that the registration of the trademark must be refused. This is on the basis that ‘adegaborba.pt’ designates wine products and includes a geographical name.

Under EU law, trademarks which are “devoid of any distinctive character” may not be registered.

In its consideration, the court said the term “adega” has two meanings in Portuguese. The first corresponds to underground premises, or a cellar, in which wine in particular is kept. The second refers to premises or facilities in which wine or wine products are produced.

Adding to this, the court said that members of the public will perceive the term “adega” to be a reference to a facility in which wine is produced and stored and must therefore be regarded as a “descriptive”, not distinctive, term for the goods it designates.

The second half of the mark, “borba”, is a descriptive term and a geographical name which members of the public will associate with the geographical origin of those goods it describes, the court added.

The court concluded the mark to have descriptive character and be devoid of any distinctiveness.

Founded in 1998, J Portugal Ramos Vinhos currently operates in four regions across Portugal.

Adega de Borba, which was set up in 1995, was one of the first wineries created in the Alentejo region of Portugal.

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