by Jeremy Erwin , Ross Magee June-21-2021 in Commercial & Business, Intellectual Property
The European Union Intellectual Property Office (“EUIPO”) recently delivered a judgment rejecting the application for registration of the trade mark “The Port House”, the well-known Irish tapas restaurants.
In a decision delivered in May 2021, the Opposition Division of the EUIPO refused the application on the grounds that the use of the name by the Porterhouse Group is likely to cause confusion amongst consumers who might associate the tapas bars with Port, the famous sweet, fortified wine.
Background
On 27 November 2019, the Portuguese Port and Douro Wines Institute (Instituto dos Vinhos do Douro e do Porto) (the “Institute”) filed an opposition against the application by the Porterhouse Group for the word mark, “The Port House”. The opposition was based on the protected designation of the term “Port”. The Institute invoked Article 8(6) of the EU Trade Mark Regulations (“EUTMR”) which protects designations of origin and geographical indicators from trade mark applications. The Institute referred to Portuguese domestic law which provides for protection against the use of the term ‘port’, particularly for products in the wine sector. However, the opposition was based solely on the respective EU Regulations which provide for an exhaustive Register of Protected Designation of Origin and Protected Geographical Indications for which ‘Port’ is recognised by the EU law, under the umbrella of Article 107 of Regulation (EU) No 1308/2013 (the “Regulations”).
The Decision
The EUIPO accepted the arguments advanced by the Institute. In particular, the Institute provided evidence that invoked the earlier right to the use of the term “Port”. According to Register of Protected Designation of Origin and Protected Geographical Indications established by Article 104 of the Regulations, ‘Port’ has been registered since 24 December 1991 for ‘wine in a protected designation of origin” (“PDO”). The PDO ‘Port’ was registered before the Porterhouse Group’s application date and was, therefore, deemed to have priority over it.
Article 103(2) of the Regulations also provides that wines using protected names in conformity with the product specification will be protected against any direct or indirect commercial use of a protected name and any other practice liable to mislead the consumer. In addition, the potential conflict with earlier rights are assessed from the point of view of consumers throughout the European Union and not merely consumers in the Member State in which the product giving rise to a conflict is manufactured.
The EUIPO accepted the submission of the Institute that the direct use of the PDO ‘Port’ would result in at least a part of the relevant public to perceive that it is an establishment where wine of the PDO ‘Port’ is manufactured, sold and/or served. The EUIPO also stated that the use of the trade mark is likely to affect the consumer’s preferences by inducing them to believe that the Port House’s services consist of, or include, provision of wine compliant with strict requirements and quality standards of the PDO ‘Port’ which enjoys extensive reputation and appreciation among European consumers.
The EUIPO upheld the challenge against the registration of the mark “The Port House” stating that it would exploit the exceptional reputation enjoyed by wines with the PDO. It believed the use of the PDO ‘Port’ by the chain of tapas restaurants would enhance the restaurants’ ability to stand out among its competitors and would benefit from the PDO’s image of prestigious and well-established wine with a long history on the market in the European Union.
The decision emphasises the importance placed in the protection of goods and services related to geographical identification in the European Union. It is in essence, a guarantee to the consumer of the geographical origin of the goods and the special qualities connected to them. It again highlights the importance of due diligence for any person or body seeking European Union trade mark protection.
If you would like further information on any of the issues raised in this article, please contact Jeremy Erwin jerwin@hayes-solicitors.ie or Ross Magee rmagee@hayes-solicitors.ie at Hayes solicitors LLP.
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About the Authors
Jeremy Erwin
Jeremy specialises in insolvency, commercial litigation and dispute resolution, acting for a variety of companies and financial institutions in contract law cases, enforcement and recovery actions and in high value complex Commercial Court proceedings. Jeremy also specialises in intellectual property matters, including advising on registration and protection of trade marks and related rights and on trade mark disputes.
Ross Magee
Ross is a Solicitor in the Commercial & Business team at Hayes solicitors. He practices predominantly in insolvency, commercial litigation and dispute resolution. He acts for a variety of corporates, financial institutions, private equity funds and private individuals in contentious matters that include, insolvency; enforcement and recovery; landlord and tenant; intellectual property, defamation and other general litigation claims.