A recent decision by the Spanish Patent and Trademark Office (OEPM) has declared invalid a trademark for wines incorporating the term Margot, following an invalidity action brought by the Conseil Interprofessionnel du Vin de Bordeaux, the body responsible for protecting the renowned PDO MARGAUX, under which, among others, the famous Château Margaux wine is marketed.
What makes this decision particularly interesting is not only the favourable outcome obtained for our client, but also the legal reasoning underpinning it.
Although the OEPM first rejected the argument that the trademark was deceptive, finding that the term Margot does not, in itself, convey a sufficiently specific message regarding the geographical origin of the wine or mislead consumers, its analysis did not end there.
The OEPM ultimately upheld the invalidity action because it considered that the dominant element, Margot, within the contested sign evokes the protected designation of origin Margaux. This was so despite the absence of a literal reproduction of the protected name or any direct exploitation of its reputation. That mental association alone was sufficient to declare the trademark invalid.
The decision reiterates that Protected Designations of Origin (PDOs) benefit from an enhanced level of protection under European Union law.
In the field of PDOs and Geographical Indications (GIs), the legal assessment is not limited to the likelihood of confusion that traditionally applies in trademark law. EU legislation establishes a particularly robust protection that also extends to signs capable of creating a mental association with a protected designation.
From a practical perspective, this decision highlights the importance of carrying out a thorough clearance assessment before filing a trademark application for products in the agri-food or wine sectors. It is not enough to verify the existence of earlier trademarks; it is equally essential to assess the potential impact of protected Designations of Origin and Geographical Indications.
This is a highly relevant decision for intellectual property practitioners, the wine industry, and anyone involved in branding strategies and the protection of intangible assets.
Marta González
Registered Industrial Property Agent
