On March 23,2023, the EU Court decided to reject the “BOLGARÉ” trademark application for registration, filed by a Bulgarian company to distinguish wine and alcoholic beverages, as it was considered to be evocative of the protected origin denomination (PDO) “Bolgheri”.
The Case
The Consortium protecting the designation of origin of the wines Bolgheri and Bolgheri Sassicaia filed an opposition against the “Bolgaré” trademark application for registration, requested by a wine company located in Sofia for the products listed in class 33.
At first the EUIPO Opposition Division rejected the opposition which was then accepted during the appeal pursuant to art. 103(2)(b) of the EU Regulation 1308/2013, relating to the common organization of markets in agricultural products. As a matter of fact, such norm protects PDOs and PGIs against “any misuse, imitation or evocation, even if the true origin of the product or service is indicated or if the protected name is a translation, transcription or transliteration or if it is accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation”, “flavor”, “like” or similar expressions”.
The Bulgarian Company brough an appeal before the EU Court against the decision of the EUIPO Board of Appeals denying the evocative impact of its trademark. The applicant stated that EUIPO should have evaluated all circumstances, not only the letter of the EU Regulation 1308/2013. In particular, the Bulgarian company noted that names referring to Bulgarian people derive from the words “bulgar” and “bolgar”. Therefore, it argued that the target audience would have associated the trademark to the Italian word “Bulgari”, which indicates the Bulgarian people and not to the “Bolgheri” protected designation of origin.
Moreover, the applicant stated that the group of letters “ghe”, that can be found only in the verbal component of the protected designation of origin, could be typical of the Italian language. Therefore, the audience would have certainly perceived the phonetic and visual differences between “BOLGHERI” and “BOLGARÉ”, associating the latter to Bulgaria and its wine tradition.
The concept of “evocation”
Retracing the previous European jurisprudence, the EU Court recalled that the decisive criteria to evaluate the existence of an evocation is the consumer reaction: the sign is evocative if, when the consumer finds a questionable name, the image triggered directly in their minds is the one of the product covered by the PDO. It is restated therefore that:
“The use of such a name must therefore produce, in the mind of the relevant public, a sufficiently clear and direct link between that name and the PDO. The existence of such a link may result from several elements, in particular from the partial incorporation of the protected name, the phonetic and visual similarity between the two names and the similarity resulting therefrom, and even in the absence of such elements, from the conceptual proximity between the PDO and the name in question or even from a similarity between the products covered by that same PDO and the products or services covered by that same name”.
The decision of the EU Court
After recalling the meaning of the concept of “evocation”, the EU Court rejected the request of the Bulgarian company, accepting the arguments of the Consortium. According to the Court, alongside a visual and phonetic similarity of the terms “bolgheri” and “bolgaré”, the latter results to be also evocative of the DPO “Bolgheri”. The trademark applied for brings directly in the mind of the public the image of the product covered by the DPO.
Moreover – the Court adds – “That conclusion cannot be called into question by the fact, alleged by the applicant, that the relevant public will perceive the mark applied for as a reference to Bulgaria. That circumstance, even if ascertained, is not sufficient to prevent that public from also having in mind, when compared to that mark, the image of the product covered by the PDO ‘Bolgheri’.
Ilaria Feriti