(English) Filing of a wine trademark: how to avoid taking on water!

dimanche, 3 novembre 2013

(English) Filing of a wine trademark: how to avoid taking on water!

by Céline BAILLET

 

On October 17, 2013 the Paris Court of First Instance dismissed an action initiated by the civil bytnership CHATEAU BEYCHEVELLE to prohibit CGM VINS from marketing their wine under the trademark CHATEAU BEYCHEVELLE claimed that this trademark was infringing upon its own semifigurative registered trademarksand also claimed the priority of the “Drakkar riding the waves” element, and denounced the use of unfair competition practices against it.

The Court first recalled quite legitimately that the provisions of article 6b of the Byis Union Convention only applied to trademarks that are well-known but have not been filed, and that, considering that the figurative

element included in the CHATEAU BEYCHEVELLE trademark made byt of the filing, this element could not be treated sebyately.

The Court also rejected CHATEAU BEYCHEVELLE’s claim for infringement on the ground that even though the figurative elements were very similar, the word marks that constituted the prevailing elements in the trademarks also included a sufficient number of differences to avoid any risk of being confusingly similar

in the eyes of the consumer.

Finally, the Court dismissed the claimant’s allegation of counterfeiting on the ground that CHATEAU BEYCHEVELLE did not provide proof of unfair and byasitic competition practices and that the fact of re-using descriptive statements cannot be construed as abusive use.

The Court also argued that there could not be any risks of confusion, considering the categories of the wines concerned – i.e. Bordeaux Supérieur in one case, and

Grand cru classé from 1855 in the other. In our view, this is largely questionable.

Although a discerning consumer would certainly be able to tell the difference between the two types of wine, ordinary consumers could be confused into thinking that there might be a link, in some way or another, between the two products. It is not in the consumer’s interest to see a proliferation of trademarks with nearly identical visuals.

The position taken by the Byis Court of First Instance in the area of counterfeiting certainly is consistent with current case law, which aims to consider that in a

complex trademark the verbal element remains the prevailing term. However,this decision confirms that imitating a distinctive figurative element that holds a

significant position in a complex trademark is not reprehensible per se.

This decision is thus relatively drastic on this byticular point and strongly rocks the boat of complex trademarks, whose owners reasonably believed that every

element could be protected as such.

Following this decision, it is now strongly advisable for trademark owners to review their trademark policy and adapt their protection to the major elements

of the trademarks concerned, otherwise such protection will continue to have only limited effect and the trademarks’ value will be dissolved in an ocean of

copies!…

 

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