The Second Board of Appeal of the EUIPO has rejected the appeal filed by the Consorzio Vino Chianti, confirming the lack of distinctive character of the sign “CHIANTI GRAN SELEZIONE” (proceeding R 1650/2022-2).
The Case
On 30th March 2021, the Consorzio Vino Chianti applied for registration, as an EU collective trademark, of the figurative sign “CHIANTI GRAN SELEZIONE.”
The examiner issued a first provisional refusal, declaring the sign devoid of distinctive character in relation to the products for which protection was sought (class 33: wine conforming to the product specification of the Disciplinare di produzione della denominazione di origine controllata e garantita dei Vini Chianti).
According to the examiner, the trademark would be perceived by the public as a purely informative wording, referring to a special selection of wines from the PDO “Chianti.”
Despite the defensive arguments of the Consortium, by decision of 13th July 2022, the Office fully refused the application for registration, reiterating that the public would perceive the sign not as an indication of the collective commercial origin of the products, but as a mere laudatory information, aimed at highlighting the positive aspects of the products distinguished.
The Appeal to the EUIPO Board of Appeal
On 25/08/2022, the Consortium appealed the Office’s decision, arguing, among other things, that the PDO “Chianti” is distinctive of specific products having the requirements and origin indicated in the Disciplinare di produzione della denominazione di origine controllata e garantita dei Vini Chianti e nel Testo Unico della Vite e del Vino (“Production Specification of the Controlled and Guaranteed Designation of Origin of Chianti Wines and in the Consolidated Act on Vine and Wine”)- (Law No. 238/2016).
In this regard, it was emphasized that the trademark does not have to provide precise information regarding the identity of the producer but must simply allow the public to distinguish the product marked from that of other companies. Given that – the Consortium argued – the CHIANTI trademark can only be used by members of the Consortium who produce, bottle, and package the wine according to the Disciplinare and Testo Unico, the requested trademark would have distinguished the products of all (and only) the members of the Consortium, while the consumer would have purchased the product precisely because it is recognizable as Chianti wine.
With respect to the alleged laudatory purpose of the wording “GRAN SELEZIONE,” the Consortium stressed that the Disciplinare di produzione expressly prohibits the use of adjectives or laudatory information in the labeling of wines that have not been previously approved and that “GRAN SELEZIONE” is a traditional term expressly regulated by the aforementioned Consolidated Act. In this regard, the Consortium also specified that it had submitted an application to amend its Product Specification in order to be able to use the traditional term GRAN SELEZIONE and that this request for amendment was under consideration by the Ministry.
Also on the basis of these reasons, the Consortium argued that the distinctive character of the requested trademark was evident, because it was able to uniquely identify a particular type of wine from the wineries associated with the Consortium.
The Decision of the EUIPO Board of Appeal
By decision of 26/07/2024, the Second Board of Appeal of the EUIPO fully rejected the Consortium’s appeal, confirming the absence of distinctive character pursuant to Article 7(1)(b) of EU Regulation n.2017/1001.
The Board recalled that EU collective trademarks can be trademarks, so designated at the time of filing, that are capable of distinguishing the products of the members of the applicant association from those of other undertakings. It follows that – the Board continues – an EU collective trademark must be refused if it is not inherently distinctive.
The Board considered that the requested sign was a combination of a PDO (“Chianti”) with a highly and manifestly laudatory expression (“Gran Selezione”), with the consequence that the sign, as a whole, would be understood by the relevant consumer as purely laudatory information. This perception of the sign would make it impossible for the consumer to distinguish the products bearing the trademark as coming from the members of the Consortium compared to products from other companies.
The request to amend the Product Specification in order to be able to use the traditional term “GRAN SELEZIONE” was not considered relevant either, as it would have – according to the Board – no influence on the merely laudatory and non-distinctive perception of the sign.
Ilaria Feriti