C-81/01

1 — Original language: Dutch. 3 — OJ 1979 L 54, p. 99. 2 — OJ 1989 L 232, p. 13. 4 —OJ 1987 L 84, p. 1.

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wines and grape musts. According to the 7. Article 3 of Regulation No 823/87 reads third recital in the preamble to the regu- as follows: lation, the purpose of those rules is 'to supply potential buyers and public bodies responsible for organising and supervising the marketing of the products concerned with information which is sufficiently clear and accurate to enable them to form an opinion of the products'. 5The fifth recital '1. "Specified region" shall mean a wine- in the preamble states that, in order to growing area or combination of winegrow- avoid too divergent interpretations, 'it was ing areas which produces wine possessing deemed appropriate to lay down fairly special quality characteristics and whose comprehensive rules on description;... to name is used to designate those of its wines ensure that these rules are effective, it which are defined in Article 1. 7 should also be laid down as a principle that only the details specified in the rules in question or in the relevant implementing rules are permitted for the description of wines and grape musts'.

2. Each specified region shall be precisely demarcated, as far as possible on the basis of the individual vineyard or vineyard plot. 5. The regulation makes a distinction Such demarcation shall be effected by each between mandatory information necessary Member State concerned and shall take to identify the product and optional infor- into account the factors which contribute mation designed mainly to indicate the towards the quality of the wines produced special properties of the product or to in those regions, such as the nature of the characterise it. soil and subsoil, the climate and the situation of the individual vineyard or vineyard plot.'

10. Under Article 12(1), only the infor- mation specified in Article 11 is to be permitted for the description on the label '... of a quality wine psr. However, Member States may allow 'the statement of the specified r e g i o n r e f e r r e d to in Article ll(l)(a) to be accompanied by a statement of the name of a larger geo- graphical unit of which the specified region in question is a part, in order to indicate its (c) a brand name, in accordance with the whereabouts, provided, however, that the conditions laid down in Article 40; conditions governing use of the name of the said specified region and of the name of the said geographical unit are complied with'.

11. Under Title III, 'General provisions', Article 40(1) states that the description and (i) additional details of a traditional presentation of the products referred to in kind, provided that they are used in the regulation, and any form of advertising the manner prescribed by the laws for such products, must not be incorrect or of the producer Member State and likely to cause confusion or to mislead the are entered in a list to be adopted; persons to whom they are addressed, par- ticularly as regards the information gov- erned in Article 11 and the characteristics 8 — That subparagraph reads: 'A quality wine psr shall be of the products, including their nature, marketed under the name of the specified region granted it by the producer Member State.' origin or provenance. The geographical

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name designating a specified region must (b) are: be sufficiently precise and familiarly linked to the area of production so that, taking account of the existing situations, con- fusion may be avoided. 9

BORIE MANOUX

(b) ... contain false information, particu­ B — National legislation larly with regard to geographical ori­ gin, vine variety, vintage year or a reference to superior quality.'

14. Under Article L 711-3 of the Code de la propriété intellectuelle (Code of Intellec­ tual Property), no sign the use of which is prohibited by law or likely to mislead the public, in particular as to the nature, 13. The Court has clarified the general quality or geographical provenance of the provisions governing the description and product, may be adopted as a trade mark or presentation of wine in four judgments. element of a trade mark. They are:

— Weigand; 10 I I I— Facts and procedure

15. The company Borie Manoux sells wine from the Bergerac region. On 6 January — Langguth; 11 1997 it made application to the Institut national de la propriété industrielle (National Institute for Intellectual Prop­ erty, 'INPI') for registration of the brand name Les Cadets d'Aquitaine as a trade mark to describe wines of designated origin from the Aquitaine region. On 8 July 1997 — Voisine; 2 1 the director-general of the INPI rejected the application on the basis of Articles 11 and 40 of Regulation No 2392/89 and Article L 711-3 of the Code de la propriété intel­ lectuelle.

— Kessler. 13

Bordeaux). The Cour d'appel upheld the being created as to the origin, quality or contested decision by judgment of 26 Oc- nature of the product and, second, any risk tober 1998. It held that, in the case of of confusion with a description provided quality wines psr, the statement of the for under Community law. According to production region may be supplemented Borie Manoux, viewed in that light, the only by the name of a smaller geographical brand name Les Cadets d'Aquitaine cannot unit which has undergone positive demar- be regarded as misleading and does not cation pursuant to a national provision. involve any risk of confusion. The Cour d'appel held that the inclusion of 'Aquitaine' in the brand name Les Cadets d'Aquitaine was unlawful inasmuch as it did not constitute a geographical reference the use of which is provided for by a national law or Community legislation. 19. According to the referring court, in view of the Court's judgment in Weig- ernd, 14 the interpretation of Article 40 is relevant for the purposes of a decision in the present case. The Cour de cassation therefore requested, by a judgment regis- tered at the Court on 16 February 2001, a 17. Borie Manoux then brought an appeal preliminary ruling on the following ques- on a point of law before the Cour de tion: cassation (French Court of Cassation) against the judgment of the Cour d'appel. It maintains that the Cour d'appel infringed Articles 11 and 40 of Regulation No 2392/89 by holding that the reference 'Aquitaine' is unlawful without examining or explaining why that reference in the 'Must Article 40 of Council Regulation brand name Les Cadets d'Aquitaine is (EEC) No 2392/89 of 24 July 1989 laying liable to give a misleading impression as down general rules for the description and to the origin, quality or nature of the presentation of wines and grape musts be product, or to cause confusion with a interpreted as prohibiting the registration Community or national description. as a trade mark, for the products covered by the regulation, of a geographical refer- ence the use of which is not provided for by Article 11, even where the registration of such a trade mark is not likely to mislead the consumer as to the provenance of the wine and does not give rise to any con- 18. In the main proceedings, Borie Manoux argued that it follows from Article 40 of Regulation No 2392/89 that there is no 14 — Cited in footnote 10. In that case the Court held, in connection with similar provisions of Articles 8,18 and 43 restriction on registering a geographical of Regulation No 355/79, that the expressions 'misleading name as a trade mark for wines and grape information', 'confusion' and 'false impression' must be interpreted as covering not only descriptions which are musts, provided that it does fall under any liable to be confused with the description of a particular small locality, but also all descriptions which are liable to of the prohibitions contained in the regu- induce the public to believe that the description in question lation. The prohibitions are intended to is the name, or part of the name, of a wine-growing local administrative area which does not in fact exist or the prevent, first, any misleading impression name of a small locality which does not in fact exist.

23. According to the referring court, the issue in the main proceedings is the inter- pretation of the prohibition in Article 40 of 22. The relevant provisions in this case are Regulation No 2392/89. The question is Articles 11(1) and (2), Article 12(1) and whether that article precludes the regis- Article 40(1) and (2) of Regulation tration of the trade mark Les Cadets No 2392/89. Article 11(1) lays down the d'Aquitaine for Bergeracois wines, since mandatory information to be included in the use of the geographical reference the description on the labelling in the case 'Aquitaine' is not provided for by

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26. I shall start by setting out the relevant provisions of Regulation No 2392/89, namely, Articles 11, 12 and 40.I shall also discuss the Court's case-law on that regu- lation and other, related legislation. I do so 25. The first question which arises is by reference to the following topics: whether that regulation precludes the use on a label of a geographical reference other than the region referred to in Article 11(1). As will become apparent below, the regu- lation contains, in Article 11(2)(1), a provi- sion on the name of a smaller geographical unit and, in Article 12(1), a provision on — the exhaustive nature of Regulation the name of a larger geographical unit. It is No 2392/89; clear from those provisions that the use of a geographical reference is permitted under

15 — According to the observations submitted by the French Government, the designations of origin 'Bergerac', 'Berge- rac sec' and 'Côtes de Bergerac' are regulated in French law by the Decree of 3 September 1993, JORF No 205 of 4 September 1993. — the rules concerning brand names;

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— the rules concerning geographical ref- should also be laid down as a principle that erences; only the details specified in the rules in question or in the relevant implementing rules are permitted for the description of wines and grape musts'.

— the meaning of the term 'consumer';

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that any statement on the label of a quality supplement the description or presentation wine psr needs to have an explicit basis in of wine, the Community legislature necess- Regulation No 2392/89. It will therefore be arily intended to balance the interests necessary to find such a basis in the involved as between, on the one hand, the regulation for the geographical reference protection of consumers, namely, the right used in this case. not to be misled as to the intrinsic qualities of a product, and, on the other, the protection of intellectual property rights and, in particular, the legitimate interest of the owners of a brand name to use and exploit it for commercial purposes. The Court thus encapsulates the purpose of the legislation.

The rules concerning brand names

17 — Cited in footnote 13. 18 — Cited in footnote 11.

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graphical reference in a brand name. larger geographical unit next to the desig- Artide 11 may therefore constitute the nation of origin on the label if the national basis required by Regulation No 2392/89. law provides for that. There is no dispute The question which then arises is whether that the geographical reference 'Aquitaine' Article 12, which regulates the use of in the brand name Les Cadets d'Aquitaine geographical references, prohibits it. constitutes a larger geographical unit. However, France has not permitted the use of that reference by virtue of a provi- sion of the national law. In this case, therefore, Article 12 cannot in itself form a basis for the inclusion of the geographical reference 'Aquitaine'. On the other hand, however, it is not clear from the wording of The rules concerning geographical refer- Article 12 that it prohibits the inclusion of ences a geographical reference on a label if it forms part of a brand name. That is not obvious from the scheme of the regulation either. Article 12 does in fact provide that, subject to a number of exceptions, only the 34. First of all, Article ll(l)(a) of Regu- information specified in Article 11 is to be lation No 2392/89 provides that, in the permitted for the description on the label of case of quality wines psr, the description on a quality wine psr. The use of a geographi- the labelling must include the name of the cal reference in a brand name is therefore specified region of origin. Pursuant to permitted, provided that it does not cause Article 11(2)(1), in the case of quality wines confusion or mislead the persons to whom psr, the description on the labelling may be it is addressed. The use of a brand name is supplemented by the name of a geographi- thus restricted only by Article 40 and by cal unit which is smaller than the specified trade mark law. region, in accordance with the conditions laid down in Article 13 of the regulation. 19 Under Article 12(1), Member States may allow the statement of the specified region of origin of the quality wine psr to be accompanied by a statement of the name of a larger geographical unit of which the specified region in question is a part, in order to indicate its whereabouts.

the product, or be liable to cause confusion sumer. It is clear from the judgment in with a Community or national description. Mars that the term 'consumer' is taken to According to the order for reference, the refer to average, 'reasonably circumspect Cour d'appel held that, in the case of consumers'. 20 It is settled case-law that, in quality wines psr, the statement of the order to determine whether a description or production region may be supplemented trade mark is liable to mislead a purchaser, only by the name of a smaller geographical it is necessary to take into account the unit which has undergone positive demar- presumed expectations of an average con- cation pursuant to a national provision. In sumer who is reasonably well informed and my view, in the light of the wording of reasonably observant and circumspect. 21 Article 12, that is not correct. According to the Estéé Lauder judgment, that test is based on the principle of proportionality. 22

37. It follows from the foregoing that Regulation No 2392/89 does not, in prin- ciple, prohibit the inclusion of a geographi- cal reference in a brand name. However, the condition that the brand name con- cerned does not cause confusion or mislead the consumer must certainly be complied with.

41. The Court has also held, with regard to laid down by national law, to an opinion similar provisions which are intended to poll or expert's report to guide it in forming prevent consumers from being misled, that its judgment. it is for the national court, taking into account all relevant information, to assess whether a description or trade mark may be misleading. 24 Where the national court has particular difficulty in making that assessment, it may, in the absence of any Community provision on this point, con- The meaning of the terms 'confusion' and sider whether, under the conditions laid 'mislead' down by its own national law, it is appropriate to commission a consumer research poll or order an expert's report. On the basis of such a survey, the national 43. 'Confusion' and 'mislead' are the key court may determine the percentage of terms in Article 40. Paragraph 2 specifies consumers misled by a promotional the meanings which 'confusion' or, as the description or statement that, in its view, case may be, 'mislead' may have in relation would be sufficiently significant in order to to a brand name. However, paragraph 2 justify, where appropriate, banning its use. does not apply to the use of a geographical reference in a brand name. For those reasons, guidance must be sought from the Court's case-law on the terms 'con- fusion' and 'mislead'. In a series of judg- ments, the Court has given an interpre- tation of those terms within the meaning of Article 40 and of other articles in which they occur. I have already cited those 42. In summary, in order to assess whether judgments in point 13 of this Opinion and a description or trade mark is misleading, I shall now examine in greater detail the the national court must take into account considerations which are relevant to this the presumed expectations of the average case. consumer who is reasonably well informed, circumspect and observant. When that test is applied to a particular case, account must be taken of the linguistic, cultural and social differences between the Member 44. In order to determine the scope of States, which may mean that a trade mark Article 40, the meaning of the words 'be... which does not mislead the consumer in likely to cause confusion or to mislead' for one Member State does so in another the purposes of Article 40 must first be Member State. Where it appears particu- established. The Court interpreted those larly difficult to assess whether a descrip- terms in the context of Articles 8, 18 and tion or trade mark is misleading, Commu- 43 of Regulation No 355/79, the wordings nity law does not preclude a national court of which are practically the same as that of from having recourse, under the conditions Article 40, in Weigand. 25In that case, the

47. As I observed in point 31, the Court held in Kessler that by authorising in principle the use of brand names to supple- ment the description, presentation and advertising of sparkling wines, the Com- munity legislature intended to strike a balance between the interests involved, that 45. In Kessler, 26 the question at issue was is to say, between the right of consumers whether the use of the terms 'cause con- not to be misled as to the intrinsic qualities fusion' and 'mislead' as alternatives in of a product, and the legitimate interest of Article 13(1) and Article 13(2)(a), while the owners of a brand name to use and Article 13(2)(b) is concerned only with the exploit it for commercial purposes. The question whether the descriptions in ques- Court took the view that that balance tion are 'liable to be confused', might would be seriously undermined if a mere indicate that, in the first two cases, the prohibition presupposes proof of the risk of 27 — Council Regulation (EEC) No 2333/92 of 13 July 1992 laying down general rules for the description and presen- tation of sparkling wines and aerated sparkling wines 26 — Cited in footnote 13. (OJ 1992 L 231, p. 9).

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risk of confusion, found to exist without 22 and 23 of that judgment that '[t]he even taking the opinions and habits of the likelihood of confusion must... be appreci- consumers concerned into consideration, ated globally, taking into account all fac- were enough to prevent the use of an tors relevant to the circumstances of appellation protected as a brand name. It the case. That global appreciation of the must therefore be established that the use visual, aural or conceptual similarity of the of a brand name is in fact likely to mislead marks in question, must be based on the consumers. overall impression given by the marks, bearing in mind, in particular, their dis- tinctive and dominant components.'

28 — Cited in footnote 11. 29 — Case C-251/95 |1997| ECR I-6191. 30 — Cited in footnote 12.

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51. I summarise the foregoing case-law on misled. In that respect, the Court held in the terms 'confusion' and 'mislead' as Langguth 32 that the use of a brand name follows. The essential point is that use of may only be regarded as giving rise to the brand name should in fact be likely to confusion or misleading the persons to mislead the consumers concerned and thus whom it is addressed if it is established affect their economic behaviour. In that that, having regard to the views or habits of sense there must be an actual risk. The term the consumers concerned, there is a real 'confusion' in Article 40 is in itself certainly likelihood of their economic behaviour a wide concept. In addition to confusion in being affected. the narrow sense of the term, it also covers the use of deceptive descriptions which are liable to create the impression on the part of the public of an origin or of char- acteristics which in reality do not exist. In addition, it also covers the likelihood of association. Since the aim of Article 40 is to prevent in the marketing of wine all prac- tices which are of such a nature as to create 53. The French Government argues, by false appearances, intent is not a require- reference inter alia to the judgments in ment. Weigand and Langguth, that Article 40 prohibits the inclusion of a geographical reference in a brand name, the use of which is not provided for by Article 11, because of the likelihood of confusion of such a brand name with an existing brand name or the likelihood that it will mislead con- sumers as to the provenance of the wine.

55. Both the French Government and the Commission take the view that it is for the national court to ascertain whether the inclusion of the geographical reference 'Aquitaine' in the brand name Les Cadets d'Aquitaine is liable to mislead the con- sumer. It is settled case-law that the national court must take into account in that context the presumed expectations of an average consumer who is reasonably 57. As I have already stated in point 37, well informed and reasonably observant Regulation No 2392/89 does not in itself and circumspect. 34 prohibit the use of the name of a large region as a geographical reference in a brand name. Such a prohibition cannot be inferred either from Articles 11 and 12 or from Article 40 of the regulation. I there- fore share the Commission's view that the inclusion of a geographical reference in a brand name, the use of which is not regulated by a national law or by a Assessment proper Community provision, is not contrary to Article 40 solely for that reason. The use of such a reference is permitted, provided that it does not cause confusion or mislead the consumer. I also make that inference from the cases which I have discussed in 56. The referring court's question must be points 44 et seq. It is clear from those cases answered in the light of the scheme of the that protection of the consumer is the main regulation. The regulation lays down emphasis of Regulation No 2392/89 as far exhaustive rules as to which particulars as information which is liable to cause are and which are not permitted, but uses confusion or mislead is concerned. for that purpose terms which are not 35 — In that respect the legislation does not comply with the provisions of the Interinstitutional Agreement of 22 De- 33 — Cited in footnote 13; see, in that regard, point 46 of this cember 1998 on common guidelines for the quality of Opinion. drafting of Community legislation (OJ 1999 C 73, p. 1), in 34 — See point 59 of this Opinion. particular guidelines 1 and 14.

63. It is clear that the name 'Aquitaine' is the central issue in the main proceedings. 60. In order to provide the national court Aquitaine is a large region in south-west with a further point of reference for its France, which has been known as such for assessment, I shall first examine in more centuries, where a number of renowned, detail the facts in the main proceedings. In traditional winegrowing areas are to be the light of those facts, I shall then consider found. Moreover, Aquitaine is now also how the criteria formulated by the Court one of France's administrative regions. 36 can be made more specific for the purpose Bordeaux is one of the best-known wine- of giving judgment in a case such as this. growing areas in that region. There is no doubt that the name Aquitaine is generally familiar to the French public. By the same token, it does not seem likely that the French public regards Aquitaine as a spe- cific winegrowing area. However, it is questionable to what extent the name of a large French region, in which a number of 61. The main proceedings concern the renowned winegrowing areas are located, question whether the name 'Aquitaine' is permitted as a geographical reference in the brand name Les Cadets d'Aquitaine. In the 36 — Defined in Le Petit Larousse as a 'collectivité territoriale terms of the regulation, does such a refer- administrée par le conseil régional'.

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may also be assumed to be familiar to mislead, it is necessary to take into account foreign consumers. the presumed expectations of an average consumer who is reasonably well informed, circumspect and observant. 37 In view of the circumstances of this case, it appears particularly important to take into account the expectations of consumers in other Member States as well.

66. As I have already stated in point 42 of 37 — See in particular the judgments in Cut Springenheide and Tusky, cited in footnote 21, paragraph 31, and listée this Opinion, in determining whether a Lauder, cited in footnote 21, paragraph 27, description or trade mark is liable to 38 — See point 51 of this Opinion.

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V — Conclusion

68. In the light of the foregoing considerations, I propose that the Court answer the question referred by the Cour de cassation as follows:

Article 40 of Council Regulation (EEC) No 2392/89 of 24 July 1989 laying down general rules for the description and presentation of wines and grape musts does not in principle preclude the use of the name of a large region as a geographical reference in a brand name, the use of which is not provided for by Article 11 of that regulation. The national court will need to ascertain in each individual case whether the use of a geographical reference in a brand name causes confusion or misleads the consumer. In particular, it will need to ascertain whether the geographical reference is liable to be confused with names registered pursuant to the regulation or whether the consumer associates particular quality characteristics of wine with the use of the geographical reference in the brand name. In that respect, it will also need to take into account the expectations of consumers in other Member States.