23 March 2023 (*)

(EU trade mark – Opposition proceedings – Application for the EU figurative mark BOLGARÉ – Previous designation of origin ‘Bolgheri’ – Article 8(4a) of Regulation (EC) No 207/2009 (now Article 8(6) of Regulation (EU) 2017/1001 – Article 46(1)(d) of Regulation 2017/1001 – Article 103(2)(b) of Regulation (EU) No 1308/2013)

In Case T‑300/22,

Domaine Boyar International EAD,

established in Sofia (Bulgaria), represented by F. Bojinova, lawyer,

applicant,

European Union Intellectual Property Office (EUIPO),

represented by D. Gája, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Consorzio per la tutela dei vini con denominazione di origine Bolgheri e Bolgheri Sassicaia (Consorzio DOC Bolgheri e Bolgheri Sassicaia),

established in Castagneto Carducci (Italy), represented by D. Caneva and N. Colombo, lawyers,

THE GENERAL COURT (Seventh Chamber),

composed of K. Kowalik-Bańczyk (Rapporteur), President, G. Hesse and B. Ricziová, Judges,

Registrar: E. Coulon,

having regard to the written part of the procedure,

makes the following

1By its action under Article 263 TFEU, the applicant, Domaine Boyar International EAD, seeks annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 March 2022 (Case R 2564/2019-2) (‘the contested decision’).

Background to the dispute

2On 2 May 2017, the applicant filed an application for registration of an EU trade mark with EUIPO, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), for the following figurative sign:

3The mark applied for designated the goods in Class 33 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponding to the following description: ‘Alcoholic beverages [except beers]; alcoholic extracts; alcoholic essences; alcoholic beverages [except beer]; alcoholic beverages containing fruit; anisette [liqueur]; anise [liqueur]; aperitifs; arak [arrack]; baijiu [Chinese distilled alcoholic beverage]; brandy; wine; kirsch; vodka; bitters; distilled beverages; gin; digesters [liqueurs and spirits]; cocktails; perry; curacao; liqueurs; hydromel [mead]; mead [hydromel]; peppermint liqueurs; nira [sugarcane-based alcoholic beverage]; rice alcohol; piquette; fruit extracts [alcoholic]; pre-mixed alcoholic beverages, other than beer-based; rum; cider; sake; spirits [beverages]; whisky’.

4On 9 August 2017, the intervener, Consorzio per la tutela dei vini con denominazione di origine Bolgheri e Bolgheri Sassicaia (Consorzio DOC Bolgheri e Bolgheri Sassicaia), filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

5The opposition was based in particular on the protected designation of origin (PDO) ‘Bolgheri’.

6One of the grounds relied on in support of the opposition was that set out in Article 8(4a) of Regulation No 207/2009 (now Article 8(6) of Regulation 2017/1001).

7On 18 September 2019, the Opposition Division rejected the opposition in its entirety, including on the basis of Article 8(4a) of Regulation No 207/2009.

8On 21 August 2017, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division.

9By the contested decision, the Board of Appeal upheld the appeal and rejected the application for registration of the mark applied for on the basis of Article 8(4a) of Regulation No 207/2009. In that connection, first, it found that the intervener had established the existence of the PDO ‘Bolgheri’. Second, it found that the intervener was a person authorised under Italian law to exercise the rights arising from that PDO. Third, it found that the mark applied for evoked that PDO under Article 103(2)(b) of Regulation (EU) No 1308/2013 of the European Parliament and of the Council of 17 December 2013 establishing a common organisation of the markets in agricultural products and repealing Council Regulations (EEC) No 922/72, (EEC) No 234/79, (EC) No 1037/2001 and (EC) No 1234/2007 (OJ 2013 L 347, p. 671).

Forms of order sought

10The applicant claims that the Court should:

–annul the contested decision;

–order EUIPO and the intervener to pay the costs.

11EUIPO contends that the Court should:

–dismiss the action;

–order the applicant to pay the costs, should a hearing be held.

12The intervener contends that the Court should:

–dismiss the action;

–order the applicant to pay the costs.

Law

13Under Article 126 of the Rules of Procedure of the General Court, where the action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings. In the present case, the Court considers that it has sufficient information from the documents in the file and decides, pursuant to that article, to give a decision without taking further steps in the proceedings, even though one of the parties has requested a hearing.

14Given the date on which the application for registration at issue was filed, namely 2 May 2017, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009, in its original version (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Moreover, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001 and of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1).

15In support of the action, the applicant raises two pleas in law, the first alleging infringement of Article 46(1)(d) of Regulation 2017/1001, read in conjunction with Article 7(2)(e) of Delegated Regulation 2018/625, and the second alleging infringement of Article 8(4a) of Regulation No 207/2009, read in conjunction with Article 103(2)(b) of Regulation No 1308/2013.

The first plea in law, alleging infringement of Article 46(1)(d) of Regulation 2017/1001, read in conjunction with Article 7(2)(e) of Delegated Regulation 2018/625

16The applicant claims that the Board of Appeal infringed Article 46(1)(d) of Regulation 2017/1001, read in conjunction with Article 7(2)(e) of Delegated Regulation 2018/625, by wrongly finding that the intervener was authorised to exercise the rights arising from the PDO ‘Bolgheri’.

17EUIPO and the intervener dispute the applicant’s arguments.

18Under Article 46(1)(d) of Regulation 2017/1001, an opposition may be filed by persons authorised under the relevant national law to exercise the rights referred to in Article 8(6) of that regulation. Furthermore, Article 7(2)(e) of Delegated Regulation 2018/625 provides, in that regard, that the opposing party is to provide evidence of the acquisition, continued existence and scope of protection, including, where the earlier designation of origin or geographical indication is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

19Moreover, it should be borne in mind that, according to Article 95(2) of Regulation 2017/1001, EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned. It thus follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation 2017/1001 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (see, to that effect, judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 42).

20In the present case, it should be observed that, in the contested decision, first, the Board of Appeal found that legge n. 238 – Disciplina organica della coltivazione della vite e della produzione e del commercio del vino (Law No 238 – Organic framework for the cultivation of vines and the production and commercialisation of wine) of 12 December 2016 (GURI No 302 of 28 December 2016, p. 1) (‘Law No 238 of 2016’) regulated vine cultivation and the production and commercialisation of wine in general. It thus noted that that law did not specifically mention the intervener.

21Second, the Board of Appeal reproduced, in the language of the case, the first paragraph of the single article of the decreto ministeriale – Conferma dell’incarico al Consorzio volontario per la tutela dei vini con denominazione di origine Bolgheri e Bolgheri Sassicaia a svolgere le funzioni di tutela, promozione, valorizzazione, informazione del consumatore e cura generale degli interessi di cui all’art. 41, comma 1 e 4, della legge 12 dicembre 2016, n. 238 per la DOC ‘Bolgheri’ e ‘Bolgheri Sassicaia’ (Ministerial Decree – Confirmation of the assignment to the Consortium for the protection of wines with a Bolgheri and Bolgheri Sassicaia designation of origin of the functions of protection, promotion, enhancement, consumer information and general protection of the interests referred to in Article 41(1) and (4) of the Law of 12 December 2016, n. 238 for the PDO ‘Bolgheri’ and ‘Bolgheri Sassicaia’), of 19 July 2017 (GURI No 185 of 9 August 2017, p. 41) (‘the Ministerial Decree of 19 July 2017’), from which it is apparent that that decree confirmed the authority granted to the intervener by an earlier Ministerial Decree of 5 June 2014 on the protection of the PDO ‘Bolgheri’. The Ministerial Decree of 19 July 2017 stated, furthermore, that the intervener could ‘perform the functions of protection, promotion, enhancement, consumer information and safeguarding the public interest’ in accordance with Law No 238 of 2016.

22In those circumstances, the Board of Appeal found that only the Ministerial Decree of 19 July 2017 and an earlier Ministerial Decree of 5 June 2014, and not Law No 238 of 2016, authorised the intervener to file an opposition on the basis of the PDO ‘Bolgheri’ under Article 46(1)(d) of Regulation 2017/1001.

23In that connection, in the first place, the applicant claims that the intervener produced only a partial translation into the language of the case of the Ministerial Decree of 19 July 2017 within the time limit set by the Opposition Division, which expired on 14 December 2017. It essentially observes, in that regard, that Article 7(5) of Delegated Regulation 2018/625 prevented EUIPO from taking into consideration written submissions, or parts thereof, which had not been submitted in or translated into the language of the proceedings within that time limit, including, in particular, the translations of certain provisions of the previous Ministerial Decree of 5 June 2014 and of Law No 238 of 2016, respectively, produced by the intervener on 18 September 2020.

24However, it should be noted that it follows from Article 27(4) of Delegated Regulation 2018/625, which derogates from Article 7(5) of that regulation, that the Board of Appeal enjoys, in particular when examining an appeal directed against a decision of the Opposition Division, the discretion deriving from Article 95(2) of Regulation 2017/1001 to decide whether or not to take into account evidence which was not presented within the time limit set by the Opposition Division (see, to that effect and by analogy, judgment of 3 October 2013, Rintisch v OHIM, C‑122/12 P, EU:C:2013:628, paragraphs 30 and 33).

25In the present case, the applicant has failed to adduce any element capable of establishing that the Board of Appeal made a manifest error of assessment in deciding to take account of the translations submitted by the intervener on 18 September 2020, despite those translations being produced after the expiry of the time limit set by the Opposition Division.

26In those circumstances, it must be held that the applicant has no basis for claiming that the Board of Appeal did not have the opportunity to take into account translations into the language of the case submitted by the intervener on 18 September 2020 on the sole ground that those translations had not been produced within the time limit set by the Opposition Division.

27In the second place, the applicant complains that the Board of Appeal failed to examine the content of Law No 238 of 2016. However, first, it is clear that, in the contested decision, the Board of Appeal expressly stated that that law ‘[did] not specifically mention the [intervener] at all’. The applicant does not dispute the fact that that law does not make reference to the intervener.

28Second, it should be noted that the applicant has failed to explain why an examination of the content of Law No 238 of 2016 was capable of calling into question the fact that the Ministerial Decree of 19 July 2017 and a previous Ministerial Decree of 5 June 2014 had authorised the intervener to protect the PDO ‘Bolgheri’.

29In those circumstances, the first plea in law must be rejected as manifestly lacking any basis in law.

The second plea, alleging infringement of Article 8(4a) of Regulation No 207/2009, read in conjunction with Article 103(2)(b) of Regulation No 1308/2013

The applicant claims that the Board of Appeal wrongly found, solely on the basis of the examination of visual and phonetic similarities, that the mark applied for evoked the PDO ‘Bolgheri’, pursuant to Article 103(2)(b) of Regulation No 1308/2013. It argues that the Board of Appeal should have taken all the relevant circumstances into account. In that connection, first, the applicant observes that the names designating the Bulgarian people come from the words ‘bulgar’ and ‘bolgar’, which are very similar phonetically. It infers from this that the relevant public will associate that mark with the Italian word ‘bulgari’ which designates the Bulgarian people. Second, the applicant claims that Bulgaria has strong winegrowing and winemaking traditions, with the result that the relevant public will associate that mark with Bulgaria. Third, it states that the combination of the letters ‘g’, ‘h’ and ‘e’ was typical of the Italian language. Thus, the applicant takes the view that the relevant public will notice the visual and phonetic differences resulting, respectively, from that combination of the letters ‘g’, ‘h’ and ‘e’ in that PDO and from the combination of the letters ‘g’ and ‘a’ in the mark at issue. Furthermore, it claims that the visual and phonetic similarities were purely fortuitous.

EUIPO and the intervener dispute the applicant’s arguments.

Pursuant to Article 8(4a) of Regulation No 207/2009, upon opposition by any person authorised under the relevant law to exercise the rights arising from a designation of origin or a geographical indication, the trade mark applied for is not to be registered where and to the extent that, pursuant to the EU legislation or national law providing for the protection of designations of origin or geographical indications, that designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark.

Furthermore, under Article 103(2)(b) of Regulation No 1308/2013, included in Section 2 of that regulation, entitled ‘Designations of origin, geographical indications and traditional terms in the wine sector’, a PDO and a protected geographical indication, as well as the wine using that protected name in conformity with the product specifications, are to be protected against any misuse, imitation or evocation, even if the true origin of the product or service is indicated or if the protected name is translated, transcripted or transliterated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’, ‘flavour’, ‘like’ or similar.

In that connection, first, the Court of Justice has observed that Article 103(2) of Regulation No 1308/2013 provides for wide-ranging protection which is designed to extend to all uses which take advantage of the reputation enjoyed by products covered by one of those indications referred to in that provision (judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 50).

Second, for the purposes, more specifically, of defining the concept of ‘evocation’, the Court of Justice has stated that the decisive criterion is whether, when the consumer is confronted with a disputed name, the image triggered directly in his or her mind is that of the product covered by the PDO (see judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 58 and the case-law cited). 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 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 (judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 66).

Thus, according to the Court of Justice, there may be an evocation of a PDO where, concerning products which are similar in appearance, the PDO and the sign at issue are phonetically and visually similar (see judgment of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 56 and the case-law cited).

In the present case, it should be noted, in the first place, that the applicant does not dispute that the relevant public could, for the purposes of the present case, be limited to the general Italian public.

In the second place, it should be observed that the Board of Appeal correctly found that the terms ‘bolgaré’ and ‘bolgheri’ were composed of a similar number of letters, namely seven and eight letters respectively, and that they were made up of the same first four letters and the same penultimate letter.

Furthermore, first, it should be noted that the typeface of the word ‘bolgaré’ constituting the mark applied for was only weakly stylised. Consequently, it must be held that there is a visual relationship between the PDO ‘Bolgheri’ and that mark, notwithstanding the fact, alleged by the applicant, that the relevant public will notice that that PDO, unlike that mark, contains the combination of letters ‘ghe’ which is, the applicant argues, typical of the Italian language.

Second, it is not disputed that the combination of letters ‘gh’ of the word ‘Bolgheri’ and the letter ‘g’ in the word ‘bolgaré’ will be pronounced in the same way by the relevant public. Consequently, it must be held that there is phonetic similarity between the PDO ‘Bolgheri’ and the trade mark applied for.

In the third place, it should be noted that, contrary to what the applicant suggests, the Board of Appeal did not merely assess the visual and phonetic similarity between the PDO ‘Bolgheri’ and the mark applied for. The Board of Appeal also correctly found that the goods at issue were characterised by the fact that they were all alcoholic beverages.

In those circumstances, it must be held that, when confronted with the mark applied for, the image triggered directly in the mind of the relevant public will be that of the product covered by the PDO ‘Bolgheri’. Thus, it must be held that the Board of Appeal correctly found that that mark evoked that PDO pursuant to Article 103(2)(b) of Regulation No 1308/2013.

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 fact, even if it were established, is not sufficient to prevent that public from also having in mind, when confronted with that mark, the image of the product covered by the PDO ‘Bolgheri’.

It follows from the foregoing that the applicant’s second plea must be rejected as manifestly lacking any basis in law. Consequently, the action must be dismissed in its entirety.

Costs

Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

Since the applicant has been unsuccessful, it must be ordered to pay the intervener’s costs, in accordance with the form of order sought by the intervener. However, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is held, the applicant should not be ordered to pay the costs incurred by EUIPO.

On those grounds,

hereby orders:

1.The action is dismissed.

2.Domaine Boyar International EAD shall bear its own costs and pay those incurred by Consorzio per la tutela dei vini con denominazione di origine Bolgheri e Bolgheri Sassicaia (Consorzio DOC Bolgheri e Bolgheri Sassicaia).

3.The European Union Intellectual Property Office (EUIPO) shall bear its own costs.

Luxembourg, 23 March 2023.

Registrar

President

—

Language of the case: English.