The General Court of the European Union clarifies the conditions for registering trademarks containing protected designations of origin. It also highlights the need to assess the risk of unfairly exploiting their reputation.
Can a company register a trademark containing a protected designation of origin if its products meet all the requirements for using that designation?
This question lies at the heart of the General Court’s judgment of 25 June 2025 in Case T-239/23. The case concerns the application to register the NERO CHAMPAGNE trademark.
The judgment is significant for companies that incorporate geographical indications into their trademarks. It clarifies the boundaries between the permitted use of a protected designation and the unfair exploitation of its reputation.
How Did the NERO CHAMPAGNE Trademark Dispute Arise?
The Italian company Nero Lifestyle Srl applied to register the word mark “NERO CHAMPAGNE” for goods and services in Classes 33, 35 and 41.
The Comité interprofessionnel du vin de Champagne and the French Institut national de l’origine et de la qualité (INAO) opposed the registration. They based their opposition on the earlier protected designation of origin (PDO) “Champagne”.
A distinctive aspect of this case is that the application covered wines that met the PDO “Champagne” specifications. It also included services related to those products.
This raised an important legal question: Does compliance with the product specifications mean that the trademark respects the protection granted to the designation?
What Did the General Court Rule?
The Court confirmed that EU law does not prohibit trademarks from including a protected designation of origin in principle.
When an application covers only products that meet PDO specifications, or related services, a general presumption applies. Under this presumption, the trademark does not unfairly exploit the reputation of the protected designation.
However, this presumption is not absolute.
According to the General Court, even when products meet all PDO requirements, a trademark may still unfairly exploit the designation’s reputation.
Therefore, EUIPO must examine the specific characteristics of the sign and all relevant circumstances. It cannot rely solely on the restricted list of goods and services.
Could the NERO CHAMPAGNE Trademark Mislead Consumers?
The Court also examined the meaning of “NERO”, which means “black” in Italian.
Consumers might interpret the word as a reference to a grape variety or the colour of the wine.
This matters when assessing whether the trademark could mislead consumers. The PDO “Champagne” specifications permit white and rosé Champagne, but not black Champagne.
In its judgment, the General Court partially annulled the EUIPO Board of Appeal’s decision. The Court found that the Board had failed to assess all relevant circumstances individually.
The judgment clarifies the criteria that EUIPO must apply when examining similar trademark applications.
What Does the Judgment Mean for Businesses?
The NERO CHAMPAGNE trademark case demonstrates that the right to use a protected designation of origin does not automatically permit its inclusion in any trademark.
When assessing such signs, authorities must consider more than the origin and characteristics of the products.
They must also examine how consumers perceive the trademark, its elements, and the potential exploitation of the protected designation’s reputation.
The Importance of a Preliminary Legal Assessment
For companies developing new brands in sectors involving protected geographical indications, the judgment highlights the importance of a preliminary legal assessment.
Such an assessment helps companies identify potential risks when selecting a sign. They can then address these risks before investing in registration, packaging, and market positioning.
Judgment: General Court of the European Union, 25 June 2025, Case T-239/23, NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638.