The French High court has just confirmed in two decisions the limits of the efficiency of an application for wines trademarks including toponyms or other words designating a vineyard.
The first is confirming a tendancy revealed by the French High Court on april 18 2000 admitting to coexist both trademarks CLOS SAINT GEORGES and CHATEAU SAINT GEORGES . Despite their differing parts CLOS and CHATEAU were completely descriptive, it had been taken into account that the SAINT GEORGES toponyme was very commonplace to let prevail the the authenticity of a vineyard’s name against the presumed exclusivity of a registered trademark. The second rules the impossibilty to appropriate as a trademark the toponyme of a vineyard estate the origin of the products of which cannot be warranted by the applicant.
LIMITATION OF THE OPPOSABILITY AGAINST THIRD PARTIES
The French High Court (Chambre Commerciale March 6 2007 CHATEAU LA MONDOTTE vs/ CHATEAU MONDOTTE BELLISLE) confirms an appeal judgement ruling about an opposition decision. Notwithstanding the high wellknowness of the trademark CHATEAU LA MONDOTTE , second cru classé of Médoc, the Court of Appeal of Bordeaux had decided that : the adding of the BELLISLE term to the MONDOTTE term could not be considered as an insignificant addition unable to appear to an ordinary consumer’s insight that one being supposed to be normally informed and reasonably attentive and advised.
This High Court’s judgement emphasizes the specificity of the wines of appellation sector. Its consumers are supposed to usually distinguish wines the trademarks of which are combining the same terms, family names,owners or producers titles and names of the real estates or names of the vineyards parcels.
Despite wine buyers information is increasing, it may be asked whether the understanding of a wine label is also accesssible to an actually ordinary consumer. Do we have to enjoy that two vineyards bearing lawfully almost identical names may get both trademark registration ?
Probably since it meets with the realty of their vineyards designations but it gives evidence that the requirements of winery regulations have overcome the monopoly given by the trademark law. It can be expected this kind of coexistence :
– only to concern trademarks really differing in their whole
– never to apply to identical ones without adding distinguishing particulars.
– not to let any third party buying an almost homonymous vineyard take benefit or injure to the high degree of reputation of well known wine trademarks. In any case this precedent shows how much important must be in any field of activity but especially in the winery sector to build a sanitary cordon to safeguard the trademark we are intending to protect. The realization of such a sanitary cordon has to be an anticipated and immediately active process and not to be only a reaction the occurrence of a risk since it will often come too late !
IMPACT UPON THE VALIDITY AND THE APPROPRIATION OF THE TRADEMARK
The french High Court(Chambre Commerciale 30 May 2007 SCI Château des Barrigards vs/Lobreau ) has invalidated the judgement of the Court of Appeal of Dijon of october 20 2005.
That Court of appeal had dismissed the law suit of the SCI company owner of the eponym wine estate CHÃ‚TEAU DES BARRIGARDS to invalidate and claim the ownership of the trademark DOMAINE DU CHATEAU DES BARRIGARDS , for the reason that the validity of the application was independant of the possibility of exploitation for the registrant.
According to the High Court : « a sign designating a wine under the name of an estate cannot without deception be applied as a trademark by somebody unable to warrant the grape picking and the wine growing in this place ». A trademark applied without this condition will be judged deceptive. Unlike to the Court of Appeal of Dijon that had concluded to the lack of bad faith, the High Court underlines : « the applicant who knew at the moment of the application that he did not own any mean to warrant the grap picking and thewine producing of the product purposed to be designated by the said trademark, was charateristic of his own consciencious attempt to the right concerning the faculty to use this wording to desginate wines originating from this place»
This last decision usefully completes the previous and gives a schema of the special way to treat the signs designating wines under the name of a vineyard estate:
– moreover the compulsory coexistence of vineyards names able to be distinguished according to their whole non confusing similarity in regard of well advertised ordinary consumers,
– the registrant of a trademark relating to the origin of a vineyard against which he is aware of having no right will risk the invalidation of his deceptive trademark firstly,furthermore the restitution to the owner of the said wine plant according to his fraudulent mind secondly.