Champagne - protected as a PDO

Case-law ECJ, BGH and OLG

Champagne is not only known worldwide. It is also protected as a PDO Champagne under the special protection as a protected designation of origin. We summarize how this protection claim was legally interpreted by the ECJ in the case Champagne v. Champanillo as well as in the case Champagne v. Aldi Süd's "Champagner Sorbet"; the latter case was decided before the ECJ, the BGH and the OLG Munich.

In both cases, the Association of French Champagne Producers accused that the other party was exploiting the reputation of the Champagne PDO, a violation of Article 13(1)(b) of Regulation No. 510/2006 and Article 103(2)(b) of Regulation No. 1308/2013. Accordingly, any direct or indirect use of a registered name that exploits the reputation of a designation of origin or geographical indication protected by registration is to be prohibited.

Champagne v. Champanillo

In the case of Champagne Producers v. Champanillo (judgment of 9/09/2021, EU:C:2021:713), an important aspect of this was decided by the ECJ. The protection of a PDO against unlawful imitation is to be extended not only to products and goods but also to services, the ECJ ruled, including those offered under a business name. Art. 103 of the CMO Regulation thus protects against any use that exploits the good reputation of the PDO/PGI.

The ECJ sees as decisive for the facts of such exploitation the question whether the consumer is induced by a disputed name to establish a direct mental link to the product covered by the PDO, whether he perceives the disputed term as an allusion to the PDO. This is to be examined by the national court, the ECJ ruled.
The protection regulation against the allusion to a PDO is an objective protection regulation, the European Court of Justice explained. And neither proof of intent nor fault is required for its application. Moreover, this is an independent protection that applies independently of the provisions of national law on unfair competition.

Champagne v. Champagne Sorbet

Already before, in 2017, the ECJ had to decide on the exploitation of the good reputation of Champagne in relation to Champagne shares in a food product (judgment of 20.12.2017, EU:C:2017:991). Was there an unlawful exploitation in the so-called "Champagne Sorbet" from Aldi Süd? According to the product claims, it contained 12 percent champagne - but this did not correspond to the PDO Champagne product specification.

In these proceedings, reference was made to the earlier decision EU:C:2011:484, according to which a geographical indication for spirits that do not comply with the respective specifications constitutes in principle a direct commercial use of the PDO/PGI.
However, with regard to Aldi Süd's champagne sorbet ice cream, the ECJ considered decisive whether enough champagne had been added to the sorbet at issue to give the ice cream - literally - an "essential characteristic". Given the heterogeneity of the cases that might arise, no uniformly applicable minimum proportion could be established for this question, the ECJ ruled; the decisive factors were aroma and taste. And whether there was an unlawful appropriation of the Champagne PDO in the Champagne Sorbet ice cream was to be examined by the national courts.

And that is what happened. The BGH ruled in this case in 2018, a champagne sorbet must not only taste of champagne, the champagne must rather- following the ECJ decision - be the taste-determining characteristic (Champagner Sorbet II, GRUR 2019, Urt. v. 19.07.2018, Az. I ZR 268/14). Whether this was true, the OLG Munich ultimately had to decide; according to the BGH, in a first step the taste had to be determined and in a second step its cause. This may also require obtaining an expert opinion.

OLG Munich: Champagne sorbet violates PDO Champagne

And the OLG Munich stated after all 2021 that such an exploitation of the reputation also exists if the correspondingly marked and affected product contains the indication, but is not essential for the product itself, as for example in the case of foodstuffs, which has the protected designation, but does not stand out at all or not significantly in the taste.
The appeal of the intervener Aldi Süd against the judgment of the Regional Court Munich I of March 18, 2014, Ref.: 33 O 13181/13, was rejected by the Higher Regional Court Munich: "Champagner-Sorbet" infringes the PDO Champagne.

In vain, Aldi Süd invoked the case law of the ECJ, GRUR 2019, 73 - Levola/Smilde, with which the ECJ had rejected copyright protection for food flavors for lack of work character. The OLG Munich ruled that this case law does not preclude the taking of evidence on the taste of the sorbets, inter alia, by singular witness evidence. The user (in this case: Aldi Süd) of a protected designation of origin (in this case: Champagne PDO) could not simply refer to the subjectivity of the taste vis-à-vis the holder of the property right who was burdened with the evidence and thus exclude the evidence by a witness from the outset. The OLG Munich added that proof of the taste of a food product does not necessarily require a visual inspection by tasting or any other actual examination of the product.

Conclusion: if you want to use a (protected) product name, you should inform yourself in advance about the legal context.

Please contact our IP law firm Köllner & Partner for further information or questions at: info@kollner.eu.