‘GENQUILA’, TEQUILA and the scope of ‘evocation’ according to the EUIPO

With its recent decision in case R 1033/2023 – 2, the EUIPO’S Second Board of Appeal found that a trademark application for the sign ‘DUTCH GENQUILA’ should be rejected for all alcoholic beverages including wines as it evoked the PGI ‘TEQUILA’.

The application had previously been rejected by the Opposition Division for all the contested goods in class 33 (pertaining to alcoholic beverages) but with the exception of wines, given the differences in ingredients, alcohol content, production process and taste between spirits – such as the specific product covered by the PGI - and wines and the fact that the PGI was not fully reproduced in the contested mark.

The Consejo Regulador del Tequila, the Mexican body entitled to exercise the rights arising from the PGI, which had sought a rejection for all goods in class 33, appealed this decision.

The Board of Appeal considered that, in order to determine whether there is evocation under Article 21(2)(b) of Regulation (EU) No 2019/787, the decisive criterion is whether, when consumers are confronted with a disputed designation, the image triggered in their mind is that of the product covered by the PGI, taking into account, as the case may be (1) the partial incorporation of the earlier PGI into the contested sign; (2) the visual and/or aural similarity between the signs; or (3) the conceptual proximity between them.

In the present case, the Board noted that a visual and phonetic proximity existed between the PGI ‘TEQUILA’ and the sign ‘DUTCH GENQUILA’, the latter reproducing the characteristic ending ‘QUILA’ of the former. As regards the adjective ‘DUTCH’, it remarked that under Article 21(2)(b) evocation might occur even if the true origin of the products or services is indicated.

Regarding the goods at issue, the Board observed that there was no prerequisite that the product covered by the protected designation and the goods or services covered by the contested sign should be ‘comparable’ or ‘similar’ in order to establish evocation.

On the other hand, the Board found that a clear connection existed between wine and spirit drinks, since they were all alcoholic beverages, thus they were all directed at adult consumers and were consumed under similar circumstances and for similar reasons. Their physical appearance was also similar, in the sense that both were liquids and sold in bottles. They were also likely to be sold and consumed in the same or similar types of establishments (off-licences, wine shops, restaurants, bars). In addition, there was a potential for a tequila-flavoured wine to be marketed.

Finally, the Board remarked that the fact that the PGI ‘TEQUILA’ was not fully reproduced in the contested mark was not a criterion for ruling out evocation. On the contrary, the impact of the identical ending ‘QUILA’ was in the Board’s opinion particularly strong, because it is characteristic of the PGI ‘TEQUILA’ and not commonly used otherwise. Furthermore, according to the evidence on file, the applicant deliberately chose the term since it planned to produce a spirit drink with a tequila taste.

In view of all of the above, the Board found that the relevant EU consumer was likely to establish a sufficiently clear and direct link between the contested sign used to designate wine and the spirit drink protected by the PGI ‘TEQUILA’; in other words, when confronted with the sign ‘DUTCH GENQUILA’, the image triggered directly in his/her mind was that of ‘TEQUILA’ spirit drinks.

Thus, the Board upheld the appeal and the contested EUTM application was also rejected for wines.