Background of the case

On 7 November 2017, the Spanish Patent and Trademark Office rejected the application for registration of trademark no. 3658229, with the distinctive sign “LAR DE DUERO” for “wines, all wines covered by the Ribera de Duero designation of origin”. The Regulatory Council of the Designation of Origin Ribera del Duero lodged an appeal against this decision on 21 May 2018. This appeal was also rejected and, finally, an appeal for judicial review was lodged, with the Chamber for Contentious-Administrative Proceedings of the High Court of Justice of Madrid issuing an affirmative ruling on 5 March 2020, which revoked and annulled the aforementioned administrative decision and declared that the registration of the trademark “LAR DE DUERO” should be refused.

Decision of the Supreme Court

The first question raised is to determine whether the inclusion of a Protected Designation of Origin as part of a trademark is in accordance with the law in cases where such inclusion is not liable to mislead the consumer because the registration of the trademark has been requested for products covered by that specific Designation of Origin – in this case, Designation of Origin Ribera del Duero – and whether, in that case, such use must be preceded by the corresponding authorisation from the Regulatory Council of the Designation of Origin.

Considering that the absolute prohibition of registration provided for in Article 5.1. g) of Law 17/2001, of 7 December 2001, on Trademarks, must be interpreted in the sense that it is not appropriate to register trademarks that use terms identifying or evoking a Protected Designation of Origin in their composition, provided that they may mislead the public as to the true nature, quality or geographical origin of the designated product; and this without the need to prove that the granting of the trademark or its use leads to unfair and unlawful exploitation of the reputation of the Protected Designation of Origin.

Secondly, and in relation to the question of whether the use of the trademark must be preceded by the authorisation of the corresponding Regulatory Council. We should begin by clarifying that the dispute is not about the use of a product but about the registration of a trademark. But, of course, the authorisation of the Consejo Regulador cannot be considered as a requirement for the registration of the trademark, nor can the opinion of the Consejo Regulador be considered binding with respect to the decision to be taken by the Spanish Patent and Trademark Office.

Lastly, and in relation to the previous rulings of the Board on similar issues raised in appeals admitted prior to this one, the High Court recalls that it declared the appeals to be inadmissible, upholding the corresponding contentious-administrative appeals, therefore annulling the decisions of the Spanish Patent and Trademark Office to grant the trademarks “Deepsea Cava”, “Cavarquia Barcelona” and “Cava Brot Vins de Taller” and ordering the SPTO to refuse registration of the aforementioned trademarks.

In conclusion, the Supreme Court considered that the refusal to register the trademark in question was in accordance with the law on the grounds that it was prohibited by article 5.1.g) of Law 17/2001, of 7 December 2001 on Trademarks, and that it could mislead the public as to the nature, quality or geographical origin of the products, as consumers could believe that the wines protected by the trademark were endorsed by the “Ribera del Duero” Designation of Origin.

Ruling 498/2021 of the Supreme Court of 12 April 2021