The matter at hand

Ageda Cooperativa de Borba is the proprietor of a national Portuguese word mark for ADEGABORBA.PT, for wine. A competitor, J. Portugal Ramos Vinhos, filed an action for annulment of the mark, arguing that the mark merely consists of the term ‘adega’ (which is commonly used to designate facilities in which wine products are produced and/or stored) and the geographical indication ‘Borba’.

A Portuguese court of appeal found that the word mark has distinctive character as the term ‘adega’ was a distinctive term in the wine sector, designating wines coming from producers in the cooperative Adega Cooperativa de Borba. Ramos Vinhos appealed against this decision to the referring court, the Supremo Tribunal de Justiça (the Portuguese Supreme Court).

The Portuguese Supreme Court raised a preliminary question whether the registered mark should be annulled on the basis of the Portuguese equivalent of Article 3(1)(c) of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks.

The judgment of the ECJ

After reiterating settled case law on Article 3(1)(c) of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, the ECJ holds that the fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in that provision are merely those which serve to designate a property of the goods/services, easily recognisable by the relevant class of persons (paragraph 19). Therefore, a sign can be denied registration on the basis of this Article only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (paragraph 20).

The ECJ determines that the term ‘adega’ means the underground premises in which wine is kept and refers to premises or facilities in which wine is produced (paragraph 21). According to the ECJ, such a term is, in principle, an indication which may serve to designate a property of those goods, easily recognisable by the relevant class of people (paragraph 22). Consequently, a term designating such a facility constitutes a characteristic of those goods and falls within the scope of application of that provision. It must therefore be regarded as descriptive of the goods which it designates (paragraph 24).

The fact, even if proven, that such a geographical name constitutes a protected designation of origin by virtue of the Single CMO RegulationCouncil Regulation [EC] No 1234/2007 pf 22 October 2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products is in no way capable of calling such an interpretation into question, since it is evident from Article 102 of this regulation that, in essence, such a designation may not be registered as a commercial trade mark (paragraph 26).

The ECJ furthermore rules that the fact that ‘adega’ is part of the company name is irrelevant for the purposes of examining the descriptive character of that term, having regard to the fact that such an examination is carried out by reference to the goods for which registration of the trade mark is sought and by reference to its perception by the relevant public (paragraph 27).