'Port Charlotte' whisky confirmed as not infringing the protected designation of origin of 'Port'.

The Court of Justice of the European Union (CJEU) recently confirmed that the trademark for a Scottish Whisky, Port Charlotte, doesn’t infringe the protected designation of origin (PDO) of the Portuguese protected designation of ‘port’ or ‘porto’.

PDO’s and Geographical Indications (GI’s) are names or descriptions which have intellectual property rights. They cover products that originate from a specific geographic region, like parma ham, champagne, or Halen Mon Anglesey Sea Salt. The legal definition states that they ‘identify a good as originating in [a region or locality] where a given quality, reputation, or other characteristic is attributable to its geographical origin.’ The descriptions don’t have to be geographical in name.

This case originated when a Scottish distillery – Bruichladdich Distillery Co Limited (BD) – made a trademark application for ‘Port Charlotte’, for a range of its alcoholic beverages in 2006. The trademark was granted by the European Union Intellectual Property Office (EUIPO) in 2007, and the IVDP (the official Portuguese body that promotes the port industry) subsequently challenged it.  The IVDP had prior rights in the PDO’s of ‘port’ and ‘porto’, which are protected under Regulation 1234/2007 as well as under Portuguese law.

BD responded by amending the range of trademarked products the broad and general ‘Alcoholic Beverages’ to ‘Whisky.’ The EUIPO initially rejected the IVDP’s claim, which was later appealed to the General Court of the European Court of Justice (ECJ). The ECJ decided the trademark did, in fact, infringe the PDO of ‘port’, and dismissed the claim.

This decision caused concern. The name ‘Port Charlotte’ wasn’t intended to describe the product as ‘port’ wine. This narrow application could potentially limit the use of PDO’s in trademarks where there’s no distinct connection between its use, and the intended product description.  

Both the EUIPO and the IVDP further appealed the case, which was recently heard by the CJEU. The CJEU concluded that the law applicable to the protection of PDO’s would be governed exclusively and exhaustively under the Regulation., National laws of member states would not give existing PDO’s additional protection.

The Court concluded that the trademark didn’t infringe the PDO, and the ‘Port Charlotte’ trademark is valid. The court took into account that the meaning of ‘port’ in this context was a ‘harbour’, named after a woman, and that the general public would understand this. The court applied a subjective assessment, considering whether the trademark ‘evoked the relevant PDO in the mind of the average consumer.  

This case highlights the importance of the UK’s decision on how to protect its existing PDOs post-Brexit.  The food and drink industry is heavily dependent on the exclusivity of use of many PDO’s for premium products. Popular examples of traditional British products include: Cornish clotted cream, Melton Mowbray pork pies, and Aberdeen Angus Beef, to mention a few. The UK will need to consider implementing its own system of protection to ensure ongoing quality assurance for consumers, and maintain the traditional reputational standards of the specialist produce market.

For more information, please contact Nick de Figueiredo

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