DLA Piper advises Comité Champagne and INAO on landmark victory in protection of geographical indications judgment

DLA Piper has advised the Comité Interprofessionnel du Vin de Champagne (Comité Champagne) and the Institut National de l’Origine et de la Qualité (INAO), in securing a landmark judgment on the protection of geographical indications and their delicate interplay with trade marks.

Six years after the launch of the opposition proceedings before the European Union Intellectual Property Office (EUIPO) on the grounds of exploitation of reputation of the PDO “Champagne” and of the misleading nature of the contested sign, the General Court, in case T-239/23, rejected the application to register “NERO CHAMPAGNE” as an EU trade mark in relation to wines complying with the PDO “CHAMPAGNE” and related services. The Court upheld the claims of Comité Champagne and INAO, as well as of the three interveners: oriGIn, the French Republic and the Italian Republic. Notably, the Court ruled that there is no absolute presumption that the exploitation of reputation of a PDO or PGI is simply excluded because the mark is limited to products complying with the relevant specifications or to related services.

Significantly, the Court recognised the misleading nature of the term “NERO”, which evokes several well-known Italian grape varieties containing “nero” in their name and the potential to mislead consumers into believing that the product is a “black Champagne” – whereas the Specifications allow only white or rosé Champagne wines – or that it is made exclusively from Pinot Noir or other black grape varieties. This is a key ruling for all geographical indications and will hopefully be reflected in the forthcoming revision of the EUIPO Guidelines.

A team from DLA Piper's Milan office worked on the matter led by IPT partners Ginevra Righini and Elena Varese. They were supported by lawyers Valentina Mazza and Rebecca Rossi.