Robert Cumming: Robert is a partner, dual-qualified trade mark attorney and solicitor, and manages large international portfolios and complex multi-jurisdictional disputes for market-leading businesses.
Robert’s expertise lies in the strategic positioning of a brand. His experience managing international trade mark portfolios and complex cross-border litigation, complements his background working on large corporate transactions.
Chris Hoole: Chris is a partner, dual-qualified solicitor and chartered trade mark attorney, experienced in contentious and non-contentious intellectual property (IP) matters, including trade marks, designs, copyright and patents.
Working closely with a range of businesses, from blue-chip multinationals to SMEs, Chris provides tailored strategic and commercial advice to help IP-conscious businesses better protect and police their IP rights.
Lisa Thomson is a trainee trade mark attorney. Lisa works with a wide range of clients, from start-ups to SMEs, all the way through to large household names in a number of different sectors.
Would Champagne by any other name taste as sweet?
There has been talk recently regarding large Champagne houses, such as Tattinger, buying up land in the south of England to grow grapes to produce sparkling wine. Due to increasingly warm weather brought about by climate change, the area is regarded as becoming steadily better suited to growing the same grape varieties that are grown a little further south in the French Champagne region. Furthermore, the production of most English sparkling wines uses the same method that is used to make Champagne, known as the ‘traditional method’ (méthode traditionnelle).
At this point, you might be wondering what Champagne production has to do with intellectual property law, and so, I put to you the following question: if the same grape varieties are grown at similar temperatures and in similar soil conditions, what is the main difference (if you don’t ask a Champagne connoisseur) between sparkling wine produced in the UK, and sparkling wine produced in Champagne?
Simple, the name.
Champagne as a PDO
The term Champagne is a Protected Designation of Origin (PDO). A PDO arises when a group (generally an association of producers or processors of a particular product) successfully applies for a mark to achieve PDO status. In this case, the Comité Interprofessionel du Vin de Champagne (CIVC) is the group dedicated to safeguarding the term Champagne.
To gain the protection of a PDO, each stage of production, processing and preparation of the product must take place in the specific designated region. Thus, the ‘quality or characteristics of the product are essentially or exclusively due to a particular geographical environment…’ Furthermore, there are specific conditions that must be met by a product to obtain the protection of a PDO. So, in the case of Champagne, only sparkling wine produced in the Champagne region of France will qualify for use of the protected term.
PDOs are afforded protection against
- Commercial use of a registered name for products not covered by the registration… if using the name would exploit the reputation of the protected name.
- Misuse, imitation, or evocation, even if the true origin of the product is indicated.
- False or misleading indication on packaging or advertising as to the origin or qualities of the product.
- Any other practice which might mislead the consumer as to the true origin of the product.
Since Champagne is a PDO, French Champagne houses producing sparkling wine in the south of England cannot call their product by that name, even if it is extremely similar. The CIVC is quick to bring legal action against anyone who improperly uses the term Champagne, so if the producers were to try, it is likely that they would quickly get slapped with a lawsuit.
Thus, English sparkling wine will need to make a name for itself in the marketplace. This is not necessarily a bad thing because it offers those producers an opportunity to create a new niche reputation for their product. This is already happening as Sussex has been approved for PDO status to protect sparkling wines. This is a huge win for producers in the area as it will drive up the value of their products and guarantee consistency and quality to consumers whilst.
The impact of Brexit and the new UK GI scheme
When the UK left the EU, the PDO/PGI scheme as implemented by European regulations ceased to apply here. However, the UK put in place its own GI scheme which practically mirrors the EU scheme. Consequently, any existing EU PDOs/PGIs, such as Champagne, were automatically protected under a new UK regime as UK PGIs at IP completion day.
However, going forward, PDO or PGI protection must be sought separately under the UK and EU schemes. Producers in the UK must first seek protection under the UK GI scheme, and then they can apply to the EU scheme if they wish. This means that the EU no longer automatically recognises UK GIs.
The main question is whether, and to what extent, the UK and EU will remain aligned in their examination of applications for PDOs and PGIs in their respective regions. Any divergence could have significant implications for both UK and EU producers who rely on PDO/PGI status to indicate a certain level of quality or desirable characteristics. For example, if sparkling wine producers in the south of England could no longer enforce the GI Sussex in the EU, that would significantly devalue the reputation and competitive advantage that the GI is meant to afford. Consequently, a sparkling wine producer in the EU could simply sell a similar product (albeit made in a different geographical location) and benefit from the reputation of the UK GI without consequence as they would not recognise it as a valid intellectual property right.
Nevertheless, the above is merely speculation and several treaties and agreements continue to protect the status quo of PDOs around the world.
It is clear that sparkling wine produced in the south of England cannot legally be called Champagne due to the existing PDO. Vintners in England must invest in establishing an equally strong association for quality sparkling wine under a new name and then protect it in parallel in the UK and EU.
Therefore, it seems that Champagne houses are purchasing land in the south of England, not to increase the production of Champagne, but to wisely invest in a separate and blossoming market of sparkling wines. This evidences the value that intellectual property rights and regimes can afford to the agricultural sector and to product development.
Although the role and enforcement of PDOs and PGIs continue to be debated, many countries appreciate their benefits and the way that they incentivise development in specific geographical regions. Only time will tell how their use and scope may change in the future.
 William Shakespeare, Romeo and Juliet, act II scene II, 1597
 Louise Dixon, ‘England’s vineyards are producing sparkling wines comparable to Champagne’ (Fortune, 28 December 2021) <https://fortune.com/2021/12/28/english-sparkling-wines-uk-vineyards-champagne/> accessed 9 January 2023
 ‘English Sparkline Wine vs Champagne: How do they compare?’ (Lyme Bay Winery, 27 September 2021) <English Sparkling Wine vs Champagne: How do they compare? – Lyme Bay Winery
 Note: a PDO differs to another separate form of protection called a PGI (Protected Geographical Indication) which offers protection to foodstuffs and agricultural products if it can be shown that they possess a specific quality or characteristic attributable to a particular geographical area and if at least one production step takes place in that area
 https://www.champagne.fr/en/about-champagne/a-great-blended-wine/champagne-designation> accessed 9 January 2023
 Regulation (EU) No 1151/2012, art 7
 Lexis PSL, Protection of geographical indications, <https://www.lexisnexis.com/uk/lexispsl/ip/document/393990/5MPW-XJB1-F18F-K12C-00000-00/Protection-of-geographical-indications> accessed 10 January 2023
 <https://www.gov.uk/protected-food-drink-names/sussex> accessed 10 January 2023
 Articles 4, 5 and 6 of Retained Regulation (EU) 1151/2012 are generally intended to operate in the same way, and are in the same terms as, their counterparts under Regulation (EU) No 1151/2012
 IP Completion Day occurred on 31 December 2020
 Above n 8
 <https://www.gov.uk/guidance/protected-geographical-food-and-drink-names-uk-gi-schemes> accessed 10 January 2023
 For example, the Paris Convention, the TRIPS Agreement, The Geneva Act of the Lisbon Convention…