Scots' "Port Charlotte" Trademark for Whisky Declared Invalid due to Portuguese Port Wine Geographical Indication

Geographical Indications (GIs) can mean wide-ranging restrictions on applications for trade marks of any likeness to them. GIs are defined in TRIPS (Agreement on Trade-Related Aspects of Intellectual Property Rights) as "indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin". The example in this case is "port" which serves to designate the origin of port wine, from Portugal. A UK example would be Cornish Clotted Cream.

In the latest development in the present case, the mark "Port Charlotte" has been declared invalid despite being registered in respect of (scotch) whisky (as opposed to port wine) and despite the OHIM Board of Appeal determining that it was valid and that the fact that there was whisky distillery in a small-time town named Port Charlotte, on Islay in Scotland, was not sufficient to amount to the mark being descriptive, and the mark was not deceptive because its first word, port, would not be associated with port wine – rather whisky.

The General Court of the European Union

The General Court ruled that the OHIM Board of Appeal had failed to apply the national legislation in Portugal in favour of the exclusive application of the relevant European Regulation. The Portuguese legislation and case law reflect a strict approach to the protection of designations of origin or geographical indications. The IPKat has provided examples of previous marks which have been refused as trademarks under this case law: "PORTO7 for cinemas, shows & exhibitions, PORTO BRASA for restaurants, GPORT for meat, fruits and olive oil, and PORTO ORIENTE for tapestry".

Greater Protection for Geographical Indications

This case effectively extends protection for GIs whilst demonstrating the way in which European Law can conflict but also incorporate national legislation and case law. In this case, Portuguese national laws have been invoked to invalidate a trademark under European Law. As observed by the IPKat, it is a "departure from established practice and means that national laws on GIs can make a significant difference in the possibility to register some community trade marks".