MARQUÉS DE LA MANCHA: Analysis of EUIPO Boards of Appeal Decision R 1761/2022‑5

Geographical indications (GIs) constitute a critical component of European Union intellectual property law, providing legal recognition to products whose qualities, reputation, or characteristics are intrinsically linked to a specific geographic origin. Protected Designations of Origin (PDOs) represent the highest standard of protection, ensuring that products are produced, processed, and prepared in a defined territory according to precise specifications. The recent EUIPO Boards of Appeal decision R 1761/2022‑5, concerning the trademark application MARQUÉS DE LA MANCHA, illustrates the application of these principles in practice.

Absolute Protection under EU Law: PDOs and the Doctrine of Evocation

At the center of the dispute was the question of whether MARQUÉS DE LA MANCHA constituted an impermissible evocation of the PDO ‘La Mancha.’ The BoA reaffirmed that PDOs benefit from absolute protection under EU law, emphasizing that such protection extends beyond cases of direct competition. In its reasoning, the Board cited Article 103(2)(b) of Regulation (EU) No 1308/2013 (the Wine Regulation), which explicitly prohibits the use of any sign that evokes a PDO, regardless of whether the products meet the PDO specifications or whether the goods are otherwise comparable. The BoA also highlighted the role of Regulatory Councils in Spain, public-law entities tasked with supervising compliance with PDO specifications, which ensures that PDOs are not only legally recognized but actively protected against misuse or misrepresentation.

Visual, Phonetic, and Conceptual Similarity: Criteria for Assessing Evocation

The BoA’s assessment of evocation involved a multifaceted comparison of the contested sign and the PDO. The mark MARQUÉS DE LA MANCHA reproduces the core element of the PDO, namely LA MANCHA, resulting in both strong visual and phonetic similarity. Beyond the literal resemblance, the Board considered the conceptual association: both signs refer to the same geographical region, generating a mental link for the average EU consumer. While the prefix MARQUÉS DE introduces additional wording, the Board determined that this element is weak within the context of the wine sector and insufficient to mitigate the dominant impact of LA MANCHA. The proximity of the goods—including wines and other alcoholic beverages—further reinforced the likelihood of evocation, as consumers could reasonably infer a connection between the contested sign and the protected origin.

Limiting the Scope of Goods: Attempts to Circumvent PDO Protection

A significant aspect of the decision concerned the applicant’s attempt to restrict the trademark to wines that comply with PDO specifications. The BoA emphasized that such limitations are ineffective when inconsistent with reality. In this case, the opponent demonstrated that the proposed limitation did not reflect the actual use of the mark in the market. The Board concluded that this strategy constituted an attempt to evade the legal restrictions of Article 8(6) EUTMR and Article 103(2) of the Wine Regulation. The ruling therefore underscores that any effort to bypass PDO protections, whether through selective product descriptions or contractual limitations, will not shield applicants from findings of evocation.

Annulment of the Contested Decision and Rejection of the EUTM Application

Based on the foregoing analysis, the BoA annulled the contested decision and rejected the EUTM application MARQUÉS DE LA MANCHA. The ruling clarifies that evocation encompasses not only identical or confusingly similar marks but also cases where the reproduction of the PDO within a composite mark creates a conceptual or phonetic link. By rejecting the application, the Board reinforced the principle that PDO protection in the European Union is substantive and cannot be circumvented through formalistic measures or minor alterations of the original sign.

Practical Implications for Trademark Practice and the Wine Sector

The decision has important implications for legal practitioners, producers, and regulatory authorities. It demonstrates that when considering trademark applications that incorporate elements of established PDOs, careful analysis of visual, phonetic, and conceptual associations is essential. Applicants must ensure that proposed marks do not create a mental or reputational link to protected origins, even if the goods are technically compliant with PDO specifications. The ruling also highlights the broader obligations of good faith in trademark registration, signaling that strategic attempts to limit product scope or exploit partial compliance are unlikely to withstand legal scrutiny.

Conclusion: Strengthening the Integrity of Geographical Indications

The MARQUÉS DE LA MANCHA decision exemplifies the European Union’s commitment to preserving the integrity, reputation, and distinctiveness of PDOs. By affirming absolute protection against evocation, the BoA ensures that consumers can rely on the authenticity and origin of products, while producers are shielded from misleading practices. The ruling serves both as a warning to potential applicants and as a benchmark for assessing the interplay between trademark law and the protection of geographical indications. It highlights the enduring importance of legal safeguards in maintaining the value and trust associated with regional products across the European market.

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