The Court of the European Union recognizes all the reasons of the Bolgheri Consortium in the case against
the Bulgarian trademark Bolgaré, whose appeal is judged definitively and manifestly unfounded as the trademark Bolgaré is evocative of the appellation.
Bolgheri vs Bolgaré
After 6 years of battle we can fortunately write the happy end of a story that has threatened the Bolgheri designations of origin, in a scenario that other Italian and european PDOs have experienced or are living.
Indeed, in 2017, Domaine Boyar, the largest winery in Bulgaria, filed a trademark application for “Bolgaré” with the European trademark office, the EUIPO, for alcoholic beverages. Surprisingly, the opposition presented by the Consortium was rejected by the Opposition Division of the EUIPO and only in March 2022 the EUIPO’s Board of Appeals fully accepted the Consortium’s appeal. The Bulgarian counterpart then challenged the decision before the General Court of the European Union which, after about a year, has now expressed itself definitively and unequivocally on the matter.
The highest EU Court has ruled, without even setting the hearing, since the judges, after reading the defense of the Consortium as well as the decision of the EUIPO, considered the Bulgarian appeal manifestly unfounded. The ruling states that the “Bolgaré” trademark is capable of evoking, in the mind of the relevant public the PDO “Bolgheri”.
In particular, the Court added that this circumstance cannot be questioned by the fact, supported by the counterparty, that the relevant public could perceive the “Bolgaré” brand as a reference to Bulgaria. Indeed, according to the Court, this circumstance, even if it were established, it is not sufficient to prevent the public, when facing the brand “Bolgaré”, to also have in mind the image of the product covered by the “Bolgheri” PDO. In particular, between the two terms there are:
1) phonetic similarity
2) similar number of letters, of which the first four equal
3) identity of products
4) similarity in font
This ruling appears to have an importance that goes far beyond the interests of the Bolgheri area; it will be a fundamental precedent for the protection of Italian and European designations of origin. For Bugnion SpA, which assisted the Consortium in the first two phases before the EUIPO, and for EY, which continued the defense before the General Court of the European Union, it is a victory for all the Italian wine denominations, an affirmation of the absolute protection of PDOs/PGIs in the European Union against attempts to take a free ride on their reputation, beyond any linguistic or historical excuse, that we have been able to reveal before the EUIPO and the General Court of the European Union.
Behind the scenes with Paola Stefanelli
The Trademark battle
I had the honor and the burden of assisting the Bolgheri Consortium in this dispute for 6 long years and right from the first two levels of judgment before the EUIPO (the European Union Intellectual Property Office), sharing with them the searing disappointment of the first rejection decision of our opposition which had considered the BOLGARE’ trademark a mere reference to the Bulgarian people and not a clear attempt to evoke the Protected Denomination of Origin BOLGHERI and then cheering with them for the decision of the Board of Appeals of EUIPO which had overturned that decision and recognized the BOLGARE’ trademark strikingly similar to the PDO BOLGHERI and the risk for the Italian consumer of mistakenly associating the Italian denomination and the Bulgarian trademark. That decision, if on the one hand it had reiterated the maximum protection of the denominations against any type of evocation, on the other it had however suggested that in one part of the EU the evocation did not exist because the term BOLGARE’, for historical or linguistic reasons, could be associated with Bulgaria or the Bulgarian people, rather than with the PDO BOLGHERI.
“The Bugnion Job”
The eagerly awaited decision of the EU Court leaves no doubt the BOLGARE’ trademark evokes the PDO BOLGHERI and this circumstance cannot be called into question by the fact, argued by the opposing party, that the relevant public could perceive the BOLGARE’ brand as a reference to Bulgaria. Indeed, according to the Court, this circumstance, even if it were established, is not sufficient to prevent the public, when faced with the BOLGARE’ trademark, from also having in mind the image of the BOLGHERI wine. The Court therefore concluded that the appeal presented by Domain Boyar should be rejected as manifestly unfounded in law. Our defense, presented in collaboration with Avv. Nicoletta Colombo and Daniele Caneva of EY, was enough to make the EU Court decide without even fixing a hearing. It is, in essence, the best result that we could hope for. The Court also proceeded to order the counterparty to pay the costs incurred by the Consortium.