text: Some provisions of

text: Regulation (EU) No 1308/2013

text: of the European Parliament and of the Council of 17 December 2013 establishing a common organisation of the markets in agricultural products and repealing Council Regulations

text: (EEC) No 922/72

text: (EEC) No 234/79

text: (EC) No 1037/2001

text: and

text: (EC) No 1234/2007

text: and

text: Regulation (EU) 2019/787

text: of the European Parliament and of the Council of 17 April 2019 repealing

text: Regulation (EC) No 110/2008

text: in respect of geographical indications, still remain in force. It will be noted in these Guidelines, where applicable.

text: Regulation (EU) No 1151/2012

text: has been repealed.

text: Earlier GI(s) Comment Case No

text: … under

text: Article 8(6)

text: EUTMR the opponent may not rely on a national earlier right, but merely VINHO VERDE 29/10/2021, R 126/2021‑2 on the right conferred under in Portugal (national right) the EU system of protection 02/10/2020, R 282/2020‑5 of designations of origin and geographical indications for wine. (§ 99, R 282/2020‑5)

text: GIs from non-EU countries for craft and industrial products protected under the Lisbon Agreement by the seven Member States mentioned in paragraph 2.3.2 will remain valid after 3 December 2026.

text: Member States (Bulgaria, the Czech Republic, France, Italy, Hungary, Portugal and Slovakia) are party to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of 1958 (as revised in Stockholm, Sweden, on 14/07/1967, and as amended on 28/09/1979).

text: In a similar vein,

text: Article 16

text: EUTMDR in relation to invalidity proceedings.

text: It is worth noting that the provisions preventing registration, namely

text: Article 31(1) of Regulation (EU) 2024/1143

text: and

text: Article 44(1) of Regulation (EU) 2023/2411

text: refer directly to the provisions defining the scope of protection of GIs and preventing the infringing use, so they have the same scope.

text: Unless concrete, substantiated and consistent information is provided via third party observations. 99 The criterion ‘detrimental to reputation of GI’ was introduced by

text: Regulation (EU) 2024/1143

text: , whereas ‘weakens or dilutes’ was introduced on 2 December 2021 as a result of the technical reform carried out by

text: Regulation (EU) 2021/2117

text: Earlier GI(s) Contested sign Case No

text: CÍTRICOS VALENCIANOS / 24/03/2020, B 3 058 243 CÍTRICS VALENCIANS (exploitation of reputation) (PGI‑ES‑0152) for orange, mandarin and lemon

text: EUTM application No 17 878 444 for essential oils and food flavourings (Classes 3 and 30) Assessment: Taking into account the presence of the terms ‘citrics valencians’ in the contested sign and the nature of the goods for which protection is sought (the protected citrus fruit may be ingredients of oils and aromas), and the efforts made in promoting the GI that are accredited by the opponent, when faced with the contested sign, the relevant consumers will probably associate it with the PGI ‘Cítrics Valencians’ and the goods it covers. It will thus take advantage of the repute and power of attraction of the latter. The remaining elements of the contested trade mark do not prevent the association with the earlier right; on the contrary, they reinforce the association in the sense indicated by the opponent.

text: Earlier GI(s) Contested sign Case No

text: PROSECCO PriSecco 24/09/2025 (PDO‑IT‑A0516) EUTM No 14 224 083registered

text: for cocktails, non-alcoholic in for wines (confirmed evocation) Class 32

text: Assessment: To establish evocation within the meaning of

text: Article 103(2)

text: (b) of Regulation No 100 1308/2013 , the Board of Appeal was entitled to find that the decisive criterion was whether, when the consumer was confronted with the contested mark PriSecco, the image triggered directly in his or her mind was that of the goods covered by the PDO PROSECCO . The contested sign PriSecco contains, in the same order, the same letters as the name protected by the PDO PROSECCO , with the exception of the third letter, which is an ‘i’ instead of an ‘o’. It follows that the PDO PROSECCO is almost completely embedded in the contested sign. That incorporation forms part of the high degree of visual and phonetic similarity between the signs at issue, correctly found by the Board of Appeal. In addition, the Board of Appeal found that there was a notable proximity between the wines covered by the PDO PROSECCO and the non-alcoholic cocktails covered by the contested mark, on account of their consumption and marketing patterns. As regards the way in which the goods at issue are consumed, it noted that those two categories of beverages were both commonly consumed in society, in particular as aperitifs or accompanying dishes served during meals. It pointed out that non-alcoholic beverages were increasingly consumed in an equivalent manner to alcoholic beverages. As regards the way in which the goods at issue were marketed and distributed, the Board of Appeal stated that they were displayed side by side in the food sections of supermarkets and in bars and cafés. In that regard, even assuming that the goods at issue are not similar, as the applicant submits, it must be pointed out that it is possible to find an ‘evocation’ within the meaning of

text: Article 103(2)

text: (b) of Regulation No 1308/2013 even where there is no similarity between the goods concerned. In the circumstances of the present case, given the fact that the goods at issue are beverages, with the result that they may have a similar appearance, the partial incorporation of the PDO PROSECCO in the contested mark and their high degree of visual and phonetic similarity are sufficient, in accordance with the case-law cited in paragraphs 38 to 42 above, to justify a finding of evocation. (§ 43-48).

text: Earlier GI(s) Contested sign Case No

text: PROSECCO PERISECCO 28/10/2021 (PDO‑IT‑A0516) EUTM NO 12 788 907 registered R 1101/2019‑1 for alcoholic beverages (except for wines (confirmed C 15 225, evocation) beer and wine) in Class 33

text: Assessment: There is clearly a close visual and phonetic proximity between the PDO PROSECCO and the contested mark PERISECCO (§ 63). The probability that the element PERISECCO […] will make the average European consumer immediately think of the PDO PROSECCO when seeing it used for the applicant’s alcoholic beverages is particularly high (§ 65). This probability is not reduced following the partial surrender of the contested mark to -alcoholic beverages *except beers and wines*-. As reminded by the Court in the ‘Champanillo’ case (09/09/2021,

text: , Champanillo, EU:C:2021:713), 101

text: Article 103(2)

text: (b) of Regulation No 1308/2013 (unlike part (a)), does not refer to comparable products. Thus, the concept of ‘evocation’ does not require that the product covered by the PDO and the product or service covered by the disputed name be identical or similar (§67). Bearing in mind all the circumstances of the case, in particular the outstanding reputation of the PDO PROSECCO and the various additional circumstances regarding the marketing of the EUTM proprietor’s goods, underlined by the applicant in its submissions and in the contested decision, there is a very high probability that consumers, throughout the European Union, will establish a sufficiently clear and direct link between the term used to designate the EUTM proprietor’s products ‘PERISECCO’ and the PDO PROSECCO (§71). The evocation in the mind of an average European consumer is enhanced by the fact that ‘PROSECCO’ is the name that has been used for centuries to refer to a wine originating from the area of Prosecco in the region of Trieste, and which nowadays enjoys an outstanding reputation for its wines that are now protected by the PDO ‘PROSECCO’ (§ 72).

text: Earlier GI(s) Contested sign Case No Porto/Port Quevedo Port 26/02/2025,

text: , Quevedo Port, EU:T:2025:182 (PDO‑PT‑A1540) EUTM application No 18 461 727 for for Class 29: ‘Olive oils’ 26/02/2025,

text: , PORTSOY, EU:T:2025:183 Wine PORTSOY EUTM application No 18 386 353 for Class 33: Scotch Whisky

text: complying with the specifications

text: of the [protected geographical

text: indication (PGI)] Scotch Whisky’.

text: Assessment

text: : The goods at issue may be so different (olive oil vs. wine) that there is no reason to believe that the relevant consumer would establish a sufficiently clear and direct connection between a contested sign and an earlier – even reputed – PDO. An applicant’s intention is not relevant for the purposes of assessing whether ‘evocation’ of a PDO exists (26/02/2025,

text: , Quevedo Port, EU:T:2025:182, § 73-79). Assessment

text: : Significant differences in the respective features of the goods at issue (scotch whisky vs. wine) inter alia, ingredients, alcohol content, flavour, methods of production and methods of use, of which the average consumer is well aware, can support a finding that no evocation of an earlier PDO exists (26/02/2025,

text: , PORTSOY, EU:T:2025:183,§ 99).

identifier: Trade mark guidelines, Part C Opposition, Section 6 Geographical Indications (Article 8(6) EUTMR)

title: Trade mark guidelines, Part C Opposition, Section 6 Geographical Indications (Article 8(6) EUTMR)

text: Part C Opposition Section 6

type: rubrik

text: 1 Introduction

text: Pursuant to Article 8(6) EUTMR, designations of origin and geographical indications protected under Union legislation or national law may be invoked in an opposition against an EUTM application. When defining the protection given to these specific designations, the regulations refer simply to the protected/registered names, regardless of whether those names refer to a 'protected designation of origin' (PDO) , a ‘protected geographical indication’ (PGI) or a ‘geographical indication’ (GI). Moreover, the scope of protection is not affected by any distinction between PDOs, PGIs and GIs. Therefore, this section will refer to these protected names as geographical indications (GIs) without making any distinction between them. The essential function of the protection of a GI is to guarantee to the consumer the geographical origin of the goods and the special qualities connected with that origin (29/03/2011,

text: P, Bud, EU:C:2011:189, § 147). Protection of GIs on relative grounds is complementary to the ex officio protection on absolute grounds (Article 7(1)(j) EUTMR). While there is interaction and overlaps with protection under absolute grounds, there are differences both in terms of procedure and substance arising from the relative grounds nature of protection under Article 8(6) EUTMR. Article 8(6) EUTMR reads: Upon opposition by any person authorised under the relevant law to exercise the rights arising from a designation of origin or a geographical indication, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or national law providing for the protection of designations of origin or geographical indications:

type: stycke

text: 1. an application for a designation of origin or a geographical indication had already been submitted, in accordance with Union legislation or national law, prior to the date of application for registration of the EU trade mark or the date of the priority claimed for the application, subject to its subsequent registration;

text: 2. that designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark. Article 8(6) EUTMR is, therefore, a framework provision in the sense that it is the applicable EU legislation, Member State law or international agreement that determines the conditions of acquisition and scope of protection of the GI invoked. Furthermore, as will be explained below, the exhaustive nature of the EU system of protection of GIs in specific product areas determines the extent to which a GI protected under national law or international agreement is eligible to form the basis of an opposition under Article 8(6) EUTMR. For a general overview of GIs see the Guidelines, Part B Examination, Section 4, Absolute Grounds for Refusal, Chapter 10, Trade Marks in Conflict with Geographical Indications (Article 7(1)(j) EUTMR).

text: GIs are protected on various levels, under EU law, national law or international agreements, and cover various product areas such as wine, spirit drinks and agricultural products or craft and industrial products.

text: 2.1 GIs protected under EU law

text: As regards EU legislation protecting GIs, the following EU regulations are currently in place:

text: Regulation (EU) 2024/1143

text: of the European Parliament and of the Council of

text: 11 April 2024 on geographical indications for wine, spirit drinks and agricultural products, as well as traditional specialities guaranteed and optional quality terms for agricultural products, amending Regulations

text: (EU) No 1308/2013

text: (EU) 2019/787

text: and

text: (EU) 2019/1753

text: and repealing

text: Regulation (EU) No 1151/2012

text: , later referred to as ‘

text: Regulation (EU) 2024/1143

text: ’, which entered into force on 13 May 2024 and applies from that date .

text: Regulation (EU) 2023/2411 of 18 October 2023

text: on the protection of geographical

text: indications for craft and industrial products and amending Regulations

text: (EU) 2017/1001

text: and

text: (EU) 2019/1753

text: , later referred to as ‘

text: Regulation (EU) 2023/2411

text: ’, which entered into force on 16 November 2023, and fully applies as of 1 December 2025. For more information see also the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (

text: Article 7(1)

text: (j) EUTMR), paragraph 2. GIs protected under the above Regulations may be a valid basis for an opposition under

text: Article 8(6)

text: EUTMR, to the extent that they allow the person authorised under the applicable law to exercise those rights to prevent the use of a subsequent mark pursuant toArticle 26(1) of

text: Regulation (EU) 2024/1143

text: and Article 40 (1)

text: Regulation (EU) 2023/2411

text: , which determine the protection of GIs respectively.

text: 2.1.1 The exhaustive nature of the EU system of protection

text: In the areas of agricultural products, wines and spirit drinks, protection at EU level is exhaustive in nature, which means that oppositions under

text: Article 8(6)

text: EUTMR cannot be based on national rights in these areas. This is because the EU system of GI protection overrides and replaces national protection of GIs for agricultural products, wines and spirit drinks.

text: Therefore, for these products, the opponent must invoke the relevant EU legislation in the notice of opposition as the reference to national law provisions will not be considered relevant. As an example, in two oppositions based on the GI ‘Vinho Verde’ the national right was invoked instead of the EU GI. As a result, the oppositions had to be rejected.

text: As regards GIs for craft and industrial products, the new EU system under

text: Regulation (EU) 2023/2411

text: is exhaustive as of 3 December 2026 , overriding and replacing national protection of GIs for craft and industrial products. As of that date, these national rights cease to exist and only GIs protected at the EU level constitute valid rights to be invoked in new proceedings based on

text: Article 8(6)

text: EUTMR. From 1 December 2025 (the entry into force of

text: Regulation (EU) 2023/2411

text: ) until 2 December 2026, Member States may notify the Office and the Commission of a request to register EU‐level GIs based on their national legally protected names, or names established by usage, for craft and industrial products (

text: Article 70(2) of Regulation (EU) 2023/2411

text: ). The resulting EU-level GI rights will be new rights with their own priority dates, which will run from the date the request is notified to the Office and the Commission, provided that EU-level protection is granted (

text: Article 70(3) of Regulation (EU) 2023/2411

text: ). However, if the Office and the Commission are not informed on the same day, the priority date will be the latest date by which the request was notified to both institutions. In such circumstances these rights can be invoked as earlier rights under

text: Article 8(6)

text: EUTMR. For more information about the recognition of the exisitng/establisehd GIs, please see Guidelines for examination of Geographical Indications for craft and industrial products, Part D GI Procedures, Section 5.

text: 2.2 GIs protected under the laws of Member States

text: GIs protected under the laws of Member States may be a basis for opposition under

text: Article 8(6)

text: EUTMR, but only to the extent that no uniform EU protection is in place for the given category of goods. This is the case, for example, for craft and industrial products (e.g. ‘HEREND’ for porcelain goods originating from Herend, Hungary), until 2 December 2026. As indicated in paragraph 2.1.1, existing national rights for GIs for craft and industrial products are no longer valid as of 3 December 2026 (

text: Article 70 (1) of Regulation (EU) 2023/2411

text: ). Therefore those GI’s are only a valid basis for

text: Article 8(6)

text: EUTMR before that date. As they are protected by national laws, the opponent must rely on those laws and the substantiation requirements must be fulfilled (see paragraph 2.4). When the registration procedure is pending based on the request made pursuant to

text: , national protection may be extended by the Member State concerned until the registration procedure at EU level has been completed and the decision is final (

text: 2.3 GIs protected under international agreements

text: Notwithstanding that

text: Article 8(6)

text: EUTMR does not explicitly mention GIs protected under international agreements, the reference to ‘Union legislation’ and ‘national law’ naturally includes international agreements as they form part of the legal order of the European Union or the Member State that is a party to the international agreement. In order for an opposition under

text: Article 8(6)

text: EUTMR to be successful on the basis of a right deriving from any international agreement, the provisions under the international agreement must be directly applicable and they must allow the beneficiary of the relevant GI to take direct legal action to prohibit the use of a subsequent trade mark. In the latter respect, international agreements are not always self-executing. This depends on the characteristics of the agreement itself and on how they have been interpreted in the relevant jurisdiction. For example, the Office considers that the provisions of the Lisbon Agreement (in particular Articles

text: and

text: ) are not selfexecuting. As expressly indicated by Article 8 of the Lisbon Agreement, it is the relevant national legislation that must determine which type of legal actions may be taken, their scope and whether these legal actions include allowing the proprietor of an appellation of origin to prohibit the use of a subsequent trade mark. Therefore, in such cases, the requisite national legislation must be adduced as this is a necessary component in order for the opponent to prove that the GI in question can prevent use of the subsequent mark and that the opponent is entitled by the law governing the right to exercise this right.

text: 2.3.1 International agreements entered into by the EU

text: GIs deriving from agreements between the EU and third countries can be invoked under

text: Article 8(6)

text: EUTMR if the provisions of these agreements vest the GI in a particular beneficiary or a precise class of users that have a direct right of action.

text: Article 8(6)

text: (i) EUTMR requires that a GI already be applied for and be subsequently registered. However, this provision can also be applied by way of analogy to thirdcountry GIs protected under international agreements. In the case of international agreements to which the EU is a party, the date of entry into force of the international agreement is deemed to be the date of priority of such a GI (and in the case of a third-country GI added subsequently to the list of protected GIs in the relevant agreement, the date of entry into force of the addition), unless the international agreement stipulates an earlier date of priority. The EU is a Contracting Party to the Geneva Act of the Lisbon Agreement, which entered into force on 26 February 2020. GIs originating in non-EU countries protected under the Geneva Act of the Lisbon Agreement can be relied on in oppositions under

text: Article 8(6)

text: EUTMR provided that they were granted protection in the EU by the Commission or the Office through

text: Regulation (EU) 2019/1753

text: of the European Parliament and of the Council of 23/10/2019 on the action of the Union following its accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (the ‘

text: Regulation (EU) 2019/1753

text: ’) and provided that the contested trade mark was applied for after the notification of WIPO to the Commission or the Office of the international registration of the GI. Certain provisions of that Regulation have been amended by

text: Regulation (EU) 2023/2411

text: to ensure coherence in relation to the establishment of a Union system for the protection of GIs for craft and industrial products. If the contested mark was applied for before the notification to the Commission or the Office of the international registration but after the filing of the international registration with the International Bureau, the GI only constitutes an earlier right if the opponent proves that the trade mark was applied for in bad faith. The substantive law on which the opposition must rely when invoking GIs protected under the Geneva Act is

text: Article 11(1)

text: and (3) of the Geneva Act in conjunction with

text: Regulation (EU) 2019/1753

text: . For further details, see paragraph 3.2 below and the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 10, Trade Marks in Conflict with Geographical Indications (

text: Article 7(1)

text: (j) EUTMR), paragraph 6.2.3, GI is Protected under the Lisbon System (Geneva Act).

text: 2.3.2 International agreements entered into by Member States including the Lisbon Agreement

text: For the reasons set out in paragraph 2.1.1 above, a GI protected under an international agreement concluded by Member States (either among Member States or with third countries) cannot be invoked as an earlier right under

text: Article 8(6)

text: EUTMR because

text: it encroaches upon the exhaustive nature of EU law in the relevant areas (currently certain foodstuffs and other agricultural products, wines and spirit drinks). Until recently, this only affected agricultural products, wines and spirit drinks, however,

text: Regulation (EU) 2023/2411

text: provides for a new uniform and exclusive EU system for GIs for craft and industrial products. Pursuant to

text: Article 70(1)

text: , national specific protection for GIs for craft and industrial products will cease to exist from 3 December 2026. Consequently, from this date, GI protection at the national level deriving from these international agreements ceases for this sector. In the ‘Budějovický Budvar’ case (08/09/2009,

text: , Budějovický Budvar, EU:C:2009:521), the Court discussed the exhaustive nature of EU law as regards GIs originating from Member States. In the Office’s interpretation, this also applies a fortiori to third country GIs in the relevant product fields that are protected in the territory of a Member State through an international agreement concluded between that Member State and a non-EU country. The consequences of the exhaustive nature of the EU GI system equally apply to appellations protected in an EU Member State by virtue of the Lisbon Agreement, but with some particularities for the craft and industrial sector: Regarding appellations of origin originating in an EU Member State that is party to

text: the Lisbon Agreement( ), for products falling within the scope of

text: Regulation (EU) 2023/2411

text: , that Member State shall, by 2 December 2026, choose to request either (i) to register that appellation of origin under

text: Regulation (EU) 2023/2411

text: , or (ii) to cancel the registration of that appellation of origin in the International Register and notify the Office of its choice (

text: Article 64(10) of Regulation (EU) 2023/2411

text: ). The Office will treat appellations of origin originating in an EU Member State that is party to the Lisbon Agreement as ‘national specific protection’ to which

text: Article 70(1) of Regulation (EU) 2023/2411

text: applies mutatis mutandis. Appellations of origin originating in a non-EU Member State and protected under

text: Lisbon Agreement in one of the EU Member States for products falling within the scope of

text: Regulation (EU) 2023/2411

text: , but not yet protected under that Regulation, continue to exist and can be used as a basis for opposition under

text: Article 8(6)

text: EUTMR. The only situations where GIs protected under an international agreement concluded by Member States can still be invoked as an earlier right under

text: Article 8(6)

text: EUTMR are the following. International agreements concluded with third countries by a Member State before

text: its accession to the EU. This is because the obligations arising out of an international agreement entered into by a Member State before its accession to the EU have to be respected. However, Member States are required to take all appropriate steps to eliminate the incompatibilities between an agreement concluded before a Member State’s accession and the Treaty (see

text: Article 307

text: of the Treaty establishing the European Community, now

text: Article 351

text: (TFEU), as interpreted by the Court in its judgment of 18/11/2003,

text: , Budějovický Budvar, EU:C:2003:618, § 168-172). International agreements concluded with a third country by a Member State after its

text: accession to the EU, but before the entry into force of the uniform EU system of protection in the given product area. As Member States are under an obligation to eliminate incompatibilities with EU law, the Office will apply the last two exceptions only when the opponent expressly

text: refers to the exception and supports it with a coherent line of argument and

text: relevant evidence (in particular, concerning the date of entry into force of the cited international agreement in the Member State where protection is claimed and its continued validity). General allegations by the opponent (such as merely citing the relevant international agreement) will not be sufficient in of themselves for the Office to consider that one of the latter two exceptions applies.

text: 2.4 Substantiation

text: 2.4.1 General rules

text: The requirements on substantiation are governed by

text: Article 8(6)

text: EUTMR in combination with

text: Article 46(1)

text: (d) EUTMR and pursuant to

text: Article 7(2)

text: EUTMDR (in particular

text: Article 7(2)

text: (e) and

text: Article 7(4)

text: EUTMDR , which provide that the opponent must prove the existence, validity and scope of protection of the earlier GI, as well as provide evidence of its entitlement to file the opposition. The relevant information and evidence must be in the language of the proceedings, or accompanied by a translation. Consequently, in particular, according to

text: Article 7(2)

text: (e) EUTMDR, to substantiate its right, the opponent must provide the Office with evidence of: 1) the existence, validity and scope of protection of the GI invoked; 2) its entitlement to file the opposition, namely, that it is authorised under the relevant law to exercise the rights arising from a GI and that the applicable law confers on it a direct right of action to prohibit unlawful use of a GI. To prove the above, the opponent must submit, in the language of proceedings, pertinent documents emanating from the competent authorities and relevant law, including national law, if applicable. The evidence must prove all the particulars of the GI, including: the protected name;

text: that it is protected as a GI;

text: the specific goods covered by the protection;

text: that it existed before the contested mark’s priority date;

text: that the applicable law confers on the beneficiary of the GI a direct right of action

text: against unauthorised use and that the opponent is such a beneficiary.

text: 2.4.2 GIs protected under EU Regulations

text: For GIs protected in the EU that are included in the Union registers of GIs, the Office has ex officio knowledge of the contents of those registers, including the documentation that is incorporated and, as long as it is in the language of proceedings, this knowledge will be taken into account in the assessment of substantiation without the need for the opponent to present evidence. As regards the Union register of GIs for wines, spirit drinks and agricultural products, while the European Commission remains responsible for the relevant data in the Union register, the Office has ex officio knowledge because it is tasked with maintaining it and keeping it up-to-date with the relevant data that the Commission shall make available (

text: Article 22

text: in conjunction with

text: Article 93(1) of Regulation (EU) 2024/1143

text: ). As regards the Union register of GIs for craft and industrial products, the Office is itself responsible for its establishment and maintenance (

text: Article 37 of Regulation (EU) 2023/2411

text: ). The consequences for opponents substantiating oppositions under

text: Article 8(6)

text: EUTMR based on GIs protected under EU Regulations are: 1. GI for wine, spirit drinks and agricultural products The opponent is not required to submit evidence on the existence and validity of the

text: GI. If the opponent is a ‘recognised producer group’ under Article 33 of Regulation (EU)

text: 2024/1143 and this information is included in the Union register, it is not required to submit evidence of entitlement to file an opposition under

text: Articles 32(4)

text: (b) and 33(3) of

text: Regulation (EU) 2024/1143

text: . If not, the opponent must submit evidence showing its entitlement to file an opposition, for instance, showing that it is a producer group under

text: Regulation (EU) 2024/1143

text: entitled to act. 1. GI for craft and industrial products The opponent is not required to submit evidence on the existence and validity of the

text: GI. If the opponent is the producer group entered into the Union register as the GI

text: applicant, it is not required to submit evidence of entitlement to file an opposition under

text: Article 45(2)

text: (b) of

text: Regulation (EU) 2023/2411

text: Regulation (EU) 2023/2411

text: entitled to act. The Office’s ex officio knowledge of the content of the Union registers for GIs can facilitate the substantiation of the opposition only to the extent that the relevant information is in the language of proceedings. It is the opposing party’s obligation to

text: verify the correctness, completeness, and language of information that it intends to rely on and to provide any additional information that may be necessary.

text: 2.4.3 Reference to an online database

text: Where the evidence concerning the filing or registration of the earlier rights referred to in

text: Article 8(6)

text: EUTMR, or the evidence concerning the content of the relevant national law, is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source. For GIs protected in the EU (including non-EU GIs protected at EU level through bilateral and multilateral agreements) and entered in the Union registers for GIs (i.e. registers for (i) wine, spirit drinks and agricultural products and (ii) craft and industrial products), the opponent may refer to the Office’s GIview database, especially for information going beyond the mere content of the Union registers for GIs given that GIview is not only a point of access to both registers, but also includes additional data from the Member States (so-called extended data) on which the opponent may legitimately rely (seeparagraph 4.2.3.2). In cases other than the above, the opponent may submit the required evidence by referring to an online database of the competent authority which is publicly accessible and free of charge, as long as the search environment is in the language of the proceedings. It is the opponent’s responsibility to check that the online source referred to contains all the necessary information and is up to date, and if not, to submit additional evidence from an official source completing the missing information. If, for example, the database does not provide sufficient information on the opponent’s entitlement to exercise the rights arising from the GI, further documents must be submitted, such as national legislative instruments conferring on the opponent the right to enforce the GI against unlawful use. Furthermore, to prove that it is entitled to prohibit use of a subsequent trade mark under the relevant law, the opponent must specify the provisions of the applicable law it intends to rely on. If the law invoked is national law, it must also provide its contents by adducing official publications of the relevant provisions or jurisprudence, or by referring to an online source recognised by the Office (see paragraph 4.2.4.3). The opponent must also prove that the case fulfils all the conditions of the scope of protection under the relevant provisions. The above provisions and related guidance apply, in principle, to all actions, regardless of whether they are based on EU GIs, GIs protected by the laws of Member States or GIs protected by international agreements. However, as explained above, for GIs protected by EU Regulations, the Office – as keeper of registers − is considered to be aware of certain details that facilitate the substantiation of opposition based on

text: Article 8(6)

text: EUTMR. See the Guidelines, Part C, Opposition, Section 1, Opposition proceedings, paragraph 4.2 ).

text: 3 Scope of protection of GIs

text: 3.1 Situations covered by the EU Regulations

text: The scope of protection of GIs protected under the EU Regulations is governed by

text: Article 26(1) of Regulation (EU) 2024/1143

text: and

text: Article 40(1) of Regulation (EU) 2023/2411

text: , which prevent GIs from being used in a range of scenarios.

text: (GIs for wine, spirit drinks, and agricultural products) refers to a graduated list of prohibited acts against which GIs are protected: (a) any direct or indirect commercial use of the GI in respect of products not covered

text: by the registration, where those products are comparable to the products registered under that name or where use of that GI for any product or any service exploits, weakens, dilutes, or is detrimental to the reputation of, the protected name, including when those products are used as an ingredient; (b) any misuse, imitation or evocation, even if the true origin of the products

text: or services is indicated or if the protected name is translated, transcribed or transliterated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’, ‘flavour’, ‘like’ or similar, including when those products are used as an ingredient; (c) any other false or misleading indication as to the provenance, origin, nature

text: or essential qualities of the product that is used on the inner or outer packaging, on advertising material, in documents or information provided on online interfaces relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin; (d) any other practice liable to mislead the consumer as to the true origin of the

text: product.

text: (GIs for craft and industrial products) contains a similar graduated list but with the following differences: subsection (a) does not have a reference to ‘any product or any service’ underlined

text: above but states that ‘where the use of the name exploits, weakens, dilutes, or is detrimental to the reputation of a GI’. Nevertheless, despite the slight difference in wording, both provisions have the same scope and

text: is taken to also potentially apply to ‘any product or any service’ (see 25/06/2025,

text: , NERO CHAMPAGNE / Champagne (GI), § 50).

text: subsections (a) and (b) do not refer to ‘parts or components’, which would be the

text: ‘parts or components’ are regulated separately under Article 41 of Regulation 2023/2411, it is in a manner that mirrors

text: Article 40

text: by ruling out use that would exploit, weaken, dilute, or be detrimental to, the reputation of the geographical indication, and similar principles will apply. It must be emphasised that what applies are the specific conditions of the scope of protection as laid down in the applicable provisions and not, for example, the ‘similarity of signs’, ‘similarity of goods and services’ or ‘likelihood of confusion’. Detailed information on the scope of protection of GIs protected under the relevant EU regulation is included in the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (

text: Article 7(1)

text: (j) EUTMR) (e.g. definitions of direct and indirect use, imitation, evocation, misuse, misleading indication and practices, objectionable products).

text: 3.1.1 Use, including exploitation, weakening, dilution or detriment to the reputation of a GI

text: The cases involving the use of a GI for comparable products falling under

text: Article 26(1)

text: (a) of

text: Regulation (EU) 2024/1143

text: or

text: Article 40(1)

text: (a) of

text: Regulation (EU) 2023/2411

text: are normally part of the Office’s ex officio assessment of absolute grounds. See also the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (

text: Article 7(1)

text: (j) EUTMR), paragraph 4. If an opponent claims in its submission that, for example, an EUTM application contains a GI and the goods applied for are comparable to those covered by that GI (or the goods constitute the specific object of services such as retail, wholesale, import/export, provision of drink and food, production of [the product covered by the GI] for others), the Office may, if this is indeed the case and depending on the specific circumstances, reopen the examination on absolute grounds. However, under

text: Article 8(6)

text: EUTMR in combination with the abovementioned provisions a GI can be invoked against goods and services that, in principle, would not be objected to ex officio under absolute grounds , if there is use of the GI in the contested EUTM application and the opponent shows that such use would exploit, weaken, dilute or be detrimental to the reputation of the GI. On ‘use of a GI’ see the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (

text: Article 7(1)

text: (j) EUTMR), paragraph 4.1. Therefore, the provision regarding the reputation of the protected name, mentioned above, can only be relied upon when there is ‘use’ of a GI in the contested trade mark, and the opponent shows the possible exploitation, weakening, dilution or detriment to the reputation of the GI for any of the contested goods or services.

text: The reputation of GIs depends on their image in the minds of consumers, and that image, in turn, depends essentially on particular characteristics and more generally on the quality of the product. It is on the quality of the product that its reputation is based (14/09/2017,

text: P, PORT CHARLOTTE, EU:C:2017:693, § 81-82). Therefore, contrary to the situation with trade marks, where reputation is quantitatively assessed, the reputation of a GI is intimately linked to the quality of the product that it designates. All registered GIs offer a guarantee of quality due to their geographical provenance. Therefore, the Office considers that GIs are intrinsically reputed within the meaning of

text: Article 26(1)

text: (a) of

text: Regulation (EU) 2024/1143

text: or

text: Article 40(1)

text: (a) of

text: Regulation (EU) 2023/2411

text: by the mere fact that they are registered. This is irrespective of whether a GI has been registered on the basis of a claim in the application to its reputation being essentially attributable to its geographical origin (

text: Article 46(1)

text: (b) and

text: Article 46(2)

text: (b) of

text: Regulation (EU) 2024/1143

text: , for agricultural products,

text: Article 93(1)

text: (b)(i) of

text: Regulation (EU) No 1308/2013

text: , for wines,

text: Article 3(4) of Regulation (EU) 2019/787

text: , for spirit drinks, and

text: Article 6(1)

text: (b)

text: Regulation (EU) 2023/2411

text: , for craft and industrial products). A GI may, however, because of its longstanding presence on the market, marketing efforts and commercial success, acquire notoriety beyond the intrinsic baseline reputation accorded to all GIs which will increase the potential for exploitation, weakening, dilution or detriment to its reputation. Consequently, opponents do not have to submit evidence of the reputation of the GI. Nevertheless, opponents must submit convincing arguments and/or evidence

text: regarding:

text: - exploitation, weakening, dilution or detriment to the reputation of the GI; - the notoriety of the GI on the market if that is a factor that the opponent considers relevant. The submission of such evidence is, in principle, also necessary to rebut the presumption that the function of the GI in question is safeguarded in relation to the goods and services, which have been adequately restricted as explained in paragraph 3.1.3 Scope of protection of GIs in relative grounds – further aspects. The Court held that ‘[t]he incorporation in a trade mark of a name which is protected … cannot be held to be capable of exploiting the reputation of that [name] … if that incorporation does not lead the relevant public to associate that mark or the goods in respect of which it is registered with the [name] concerned or the … product in respect of which it is protected’ (14/09/2017,

text: P, PORT CHARLOTTE, EU:C:2017:693, § 115). As a rule, general allegations (such as merely citing the relevant wording of the EU regulations) of exploitation, weakening, dilution or detriment to the GI’s reputation will not be sufficient in of themselves to prove it. The opponent must adduce evidence and/or develop a cogent line of argument to demonstrate specifically how the alleged injury might occur, taking into account both the rights concerned, the goods and services in question and all the relevant circumstances.

text: 3.1.2 Evocation, imitation, misuse and misleading indications and practices

text: For ‘evocation’, ‘imitation’, ‘misuse’ and ‘misleading indications and practices’ see Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (

text: Article 7(1)

text: (j) EUTMR), paragraph 4, and more precisely paragraphs 4.2 and 4.3. The Court of Justice has clarified that the concept of ‘evocation’ extends to all uses that take unfair advantage of the reputation enjoyed by the GI through association with it (09/09/2021,

text: , Champanillo, EU:C:2021:713, § 50, see also the Opinion of the Advocate General Pitruzzella of 29/04/2021,

text: , Champanillo, EU:C:2021:350, § 36-37). This is particularly relevant in cases based on

text: Article 8(6)

text: EUTMR where the opponent can submit the relevant evidence establishing the extent of its GI’s reputation and its potential exploitation. Moreover, the Court of Justice clarified that the legal provisions on ‘evocation’ must be interpreted to protect registered GIs against conducts/practices relating to both products and services. Furthermore, it is not necessary for the product covered by the protected GI and the goods or services covered by the EUTM to be identical or similar to establish evocation (09/09/2021,

text: , Champanillo, EU:C:2021:713, § 52, 61, 66). The following examples illustrates this point.

text: Examples where the Court rejected evocation include the following.

text: 3.1.3 Scope of protection of GIs in relative grounds – further aspects

text: The scope of protection given to GIs under EU regulations safeguards their function, which is to designate goods as being from a particular geographic origin and as having the special qualities connected therewith. Unlike other signs, GIs do not indicate the commercial origin of goods and afford no protection in this regard. It can be presumed that a trade mark that contains or consists of a GI, registered solely in respect of products complying with the specification of the GI or for related services, will not unduly exploit the reputation of that GI within the meaning of

text: Article 26(1)

text: (a), 2nd part, of

text: Regulation (EU) 2024/1143

text: or

text: Article 40(1)

text: (a), 2nd part, of

text: Regulation (EU) 2023/2411

text: , since it will only be deemed to be used, on the market, in respect of products complying with the quality standards relating to that GI or in respect of services relating to such products. Therefore, the objective of protecting the quality of goods covered by a GI pursued by

text: Regulation (EU) 2024/1143

text: and by

text: Regulation (EU) 2023/2411

text: is presumed to be fulfilled in that situation (see, 25/06/2025,

text: , NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 58). However, the Court has clarified that the mere fact that a mark containing a GI limits its registration to products complying with the specification and to services relating to such products does not in itself preclude the existence of the prohibited acts provided for in

text: Article 26(1)

text: (a), 2nd part, and (b) to (d) of

text: Regulation (EU) 2024/1143

text: or

text: Article 40(1)

text: (a), 2nd part, and (b) to (d) of

text: Regulation (EU) 2023/2411

text: (see, 25/06/2025,

text: , NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 51). Furthermore, the Court has stressed that, in the context of exploitaiton of reputation, that such a presumption may be overturned when it can be demonstrated, taking into account the particular characteristics of the EUTM application and the relevant circumstances of the case and on the basis of concrete, substantiated and consistent elements, that a given EUTM application is likely to unduly exploit the reputation of a GI. This applies even if it only covers products that comply with the GI’s specification or related services. Therefore, when such elements are brought to the attention of the adjudicating bodies of the EUIPO, those bodies must examine them to ascertain

text: whether they allow that presumption to be rebutted (25/06/2025,

text: , NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 58-59, 68). Consequently, an opposition against an appropriately restricted EUTM application will not succeed, unless the abovementioned presumption has been rebutted or if it is shown that the contested trade mark contravenes any of the other prohibited acts stipulated in

text: or

text: . For general information on limits to the scope of GI protection, see the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (

text: Article 7(1)

text: (j) EUTMR), paragraph 4.5.

text: 3.2 Scope of protection of GIs protected under national law or international agreements

text: The scope of protection of GIs protected under national law or international agreements, including agreements concluded by the EU with third countries, is governed by the relevant provisions (e.g. Hungarian GI ‘HEREND’, by Article 109 of Act XI of 1997 on the protection of trade marks and geographical indications; for the GI ‘Mezcal’, by the relevant provisions of the Agreement between the European Community and the United Mexican States on the mutual recognition and protection of designations for spirit drinks (OJ L 152, 11.06.1997, page 16). The substantive provisions of the agreement concerned may for instance include specific requirements or authorisation for the use of the protected term. See also the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (

text: Article 7(1)

text: (j) EUTMR), paragraph 6.2. As regards the scope of protection of GIs protected under the Geneva Act to which the European Union is a contracting party, and in particular its

text: Article 11

text: , please see the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (

text: Article 7(1)

text: (j) EUTMR), paragraph 6.2.3, GI is protected under the Lisbon System (Geneva Act). The Office considers that in spite of the different wording of Article 11(1) of the Geneva Act, the scope of protection corresponds to that of the GIs protected under the EU Regulations (i.e. against direct and indirect use of the GI for the same and comparable products, exploitation, weakening, dilution and detriment of/to reputation of the GI, misuse, imitation or evocation or other misleading indications and practices). In addition, the Office considers that the notion of ‘goods that are not of the same kind’ is analogous to the notion of ‘non-comparable goods’ under the EU Regulations providing for the protection of GIs. The Office will therefore apply the same standard to GIs protected under the Geneva Act and will examine potential conflict with earlier GIs, bearing in mind, mutatis mutandis, the rules contained above in the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (

text: Article 7(1)

text: (j) EUTMR), paragraph 4.

text: Finally, an opposition based on

text: Article 8(6)

text: EUTMR can be successful against goods and services that are not comparable to those for which the GI is protected, provided that the opponent submits evidence and arguments to prove that either

text: Article 11(1)

text: (a) (ii) or

text: Article 11(1)

text: (b) of the Geneva Act applies to such non-comparable goods or services. In this regard the Office will apply the same standard as in the examination of cases based on

text: Article 8(6)

text: EUTMR and invoking EU GIs as a basis (see paragraph 3.1 above).

type: vagledning

utgivare: euipo