No gin in Porto and no port on Portobello Road

Clipboard01Probably more than 95% of the oppositions in the EU is dealing with trademarks only. But once in a while, some oppositions are based on other rights, mostly unregistered rights and sometimes a geographical indication. Like this one which deals with port and gin.

The applicant filed a device mark of the trademark Portobello Road for gin in the EU (left). The Institute that protects the geographical indication PORTO (port) filed an opposition. Why? Well, while Portobello Road is a famous road in London, it starts with Porto.

A bit far-fetched maybe, but the strange thing is that the Opposition division rejected the trademark. The applicant filed an appeal and the Board of Appeal of EUIPO is quite explicit: the opposition is unfounded.
First of all, the institute did not provide sufficient evidence of the earlier rights: for a large part it remains indistinct on which rights the opposition is based. Furthermore, the protection of the geographical indication covers only port and as gin and port are no similar products, the institute cannot rely on the protection of the indication. Finally, there is no association (at all) between the Portobello Road trademark and port.

The Board explains the essential function of a geographical indication – as an IP right: “it is not to monopolise the name of a city or region”. Any city or region serves as a place of protection of innumerable other goods. The essential function of a geographical indication is to protect the link between a product (and its characteristics) and a geographic origin. Geographical indications or  appellations of origin are meant to protect the consumer’s expectations that a given product has the geographic origin indicated on the product.” It seems to us that this explanation is merely for the institute (a warning not to oppose every trademark) and also for the Opposition division (who rendered a doubtful decision).

Knijff Merkenadviseurs

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