Coexistence should also characterize the relationship between TSGs and trade marks (but, as will be discussed, this is not currently settled), since it should not be subject to rules similar to those governing conflicts between trademarks and geographical indications. A trade mark is generally invalid or unregistrable, when it creates a damage to geographical indications recognized prior to the application for registration of the trade mark itself89. In the recent Nero Champagne case90, the EU Court clarified that the registration of a trade mark – containing or consisting of the name of a PDO – is not prohibited per se, but only when it allows the reputation of the incorporated PDO to be exploited. However, the Court also specified that exploitation cannot be ruled out solely because the trade mark claim is limited to products that comply with the product specifications of the geographical indication itself. According to the Court, it must be possible to prove – case by case – that such an exploitation exists to the detriment of the PDO that would be included in the trade mark, which precludes its registration91. 89 Reg. (EU) No. 2024/1143, cited above, art.31, as well as Reg. (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (codification), in OJEU L 154, 16 June 2017, pp. 1-99 (consolidated version of 16 June 2017, ELI: http://data.europa.eu/eli/reg/2017/1001/oj), art.8(6). In doctrine: F. Albisinni, Quality and origin between GIs and TMs: a difficult relationship, Mare et Martin (ed), Les marques vitivinicoles et appellations d’origine: Conflits, mimétismes et nouveaux paradigmes, 2019, p. 59; O. Vrins, The new grounds for refusal based on designations of origin and geographical indications in the ‘trade mark package’: revolution or status quo?, in JIPLP, 2016, p.752-761; B. Goebel, M. Groeschl, Learning to love my PET: the long road to resolving conflicts between trademarks and geographical indications, Elgar (ed), Research handbook on intellectual property and geographical indications, 2016, p. 361-395. 90 EU General Court, judgement of 25 June 2025, case T-239/23, Nero Champagne, cited above. Action brought on 7 May 2023, Comité interprofessionnel du vin de Champagne and INAO v EUIPO - Nero Hotels (NERO CHAMPAGNE), T-239/23, challenging the legality of the decision adopted by the Second Board of Appeal of the EUIPO on 17 February 2023 in Case R 531/2022-2, by which the registration of the European Union trade mark ‘NERO CHAMPAGNE’ (Application No 18 024 731) was allowed. The time limits for appealing the General Court ruling are currently running. 91 EU General Court, judgement of 25 June 2025, case T-239/23, Nero Champagne, cited above, point from 58 to 60: «Thus, it can be presumed that a trade mark that contains or consists of a PDO, registered solely in respect of products complying with the specification of that PDO or for related services, will not unduly exploit the reputation of that PDO, … since it will only be deemed to be used, on the market, in respect of products complying with the quality standards relating to that PDO or in respect of services relating to such products. Therefore, the objective of protecting the quality of goods covered by a PDO … is presumed to be fulfilled in that situation. However, such a presumption may be overturned when it can be demonstrated, on the basis of concrete, substantiated and consistent elements, that a given trade mark is likely unduly to exploit the reputation of a PDO, even if it only covers products complying with the specification of that PDO or related services. Thus, when such elements are brought to the attention of the adjudicating bodies of EUIPO, those bodies must examine them in order to ascertain whether they allow that presumption to be rebutted. Accordingly, to the extent that the contested decision is interpreted as introducing a rebuttable presumption, it is not tainted by an error of law. However, … it is appropriate to examine whether the Board of Appeal set out, to a sufficient legal standard, the reasons that led it to conclude that that presumption had not been rebutted in the present case». 344 ERMENEGILDO MARIO APPIANO
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