The assessment of the likelihood of confusion for wine trademarks

Does this bottle remind you a famous and inescapable wine?

Undoubtedly, you must immediately think about PETRUS wine. Sure, the labels are different as you can see below, but still there is no doubt that while seeing the above wine you will think about the outstanding wine PETRUS, one of the world’s rarest and most expensive wines.

However, this was not the opinion of Bordeaux Court of Appeal that recently had to rule on the existence of a misleading commercial practice committed by the producer of PETRUS LAMBERTINI wine, named CGM VINS (a Bordeaux wine merchant).

We will here present Judgment No. 273 of the Bordeaux Court of Appeal, 6th Correctional Chamber, of April 3rd, 2018, in this affair.


Factual background & procedure:

Prior to this action, CHATEAU PETRUS filed an opposition before French Trademark Office against trademark application “COUREAU & COUREAU PETRUS LAMBERTINI MAJOR BURDEGALENSIS 1208” No. 3787561 designating “wines with a protected designation of origin” in class 33. However, the opposition was rejected considering that the overall assessment of the signs in question did not make it possible to conclude that there was a risk of confusion between them.

Then, alerted by the marketing on several e-commerce sites of a wine presented as “the second wine of PETRUS”, CHATEAU PETRUS filed a complaint with the public prosecutor for counterfeiting, false and aggressive advertising, and deception.

Following the intervention of fraud administration, acting at the request of the public prosecutor’s office, and after the case investigation, a criminal order referred the wine merchant CGM VINS and its representatives to the Bordeaux criminal court for having committed a misleading commercial practice by creating confusion with another good or service, a trade name or a distinctive sign of a competitor, which constitutes a criminal offence on the basis of French Consumption Law.

The offence was suspected since CGM VINS:

  • Affixed, on the label of the wine registered under trademark “COUREAU & COUREAU PETRUS LAMBERTINI MAJOR BURDIGALENSI 1208”, the mention “PETRUS LAMBERTINI 2010” in bold characters while the words “MAJOR BURDIGALENSI 1208” were presented in fine characters within a religious symbol.
  • Presented the wine as a second wine, in the absence of a first

By these facts, the defendants were accused of committing a misleading commercial practice by suggesting that their wine was the second wine of CHATEAU PETRUS.

In its contradictory judgment of February 11th, 2016, the Bordeaux Criminal Court found the defendants guilty of the criminal charges and liable for the damage suffered by CHATEAU PETRUS on the basis of civil dispositions.

CGM VINS filed an appeal on both criminal and civil dispositions.

The decision of the Bordeaux Court of Appeal rendered on April 3rd, 2018, ruled on the criminal provisions in this case.


Decision of the Court of Appel:

First of all, the Court reminds the relevant dispositions on which it based its decisions: “A commercial practice is considered misleading when it contains false information or is likely to mislead the average consumer and is, in addition, likely to substantially alter his economic behavior by causing him to take a commercial decision which he would not otherwise have taken”

On this basis, the Court carries out a double analysis by considering, on the one hand, whether the practice in question is based on false allegations, indications or representations and, on the other hand, whether the commercial practice has been committed in such a way as to create confusion or whether it is likely to mislead.

In the present case, according to the Court, there is no false allegation in the presentation of the wine PETRUS LAMBERTINI since, as explained by CGM VINS in the proceedings and on its wine labels, the name refers to a real historical person, i.e. the first mayor of Bordeaux whose French name was Pierre Lambert and in Latin Petrus Lambertini, bearing in mind that, at that time, the use of Latin language was common.

Then, for the judges, it appears that the consumer is not likely to be misled by PETRUS LAMBERTINI wine because there is no ambiguity on the label since this wine is produced in the “Côtes de Bordeaux” designation of origin, while PETRUS benefits from the “Pomerol” designation of origin.

Therefore, the Court considers that the average consumer is sufficiently informed to know that a second PETRUS wine could not be produced in Côtes de Bordeaux because he would know that PETRUS is a wine benefiting from the Pomerol designation of origin, and the consumer would also know that PETRUS does not have a second wine.

In view of these elements, the Court states that the misleading commercial practice is not characterized.

The case has not yet been concluded since CHATEAU PETRUS has already announced its intention to appeal to the Supreme Court, while at the same time, the civil proceedings are still ongoing.


Our comments and conclusion on the Court’s decision:

In the present case, the judges’ assessment of the existence of a misleading commercial practice seems to us to be very strict.

Indeed, even though the Court recognizes that naming its wine “PETRUS LAMBERTINI” rather than “PIERRE LAMBERT” constitutes a clever marketing choice to attract consumers’ attention, the Court states, however, that this conduct isn’t criminally reprehensible.

According to the Court, this technique is inherent in the marketing of wines: “As soon as such a marketing technique is legal and accepted, it is quite obvious that the choice of the brand under which the wine will be sold is very open and that it must be subject to a relevant reflection as to the evocative character of the words or signs that will compose the brand”.

Yet, the Court rules out the risk of deception of the trademark, by granting great competence to the average consumer of wine who “knows that there are designations of origin and as a consequence, could not confuse the Côtes de Bordeaux wine PETRUS LAMBERTINI with the Pomerol wine PETRUS.

Such a presumption seems questionable to us since both designations of origin are located in the Bordeaux wine area. Furthermore, many studies have highlighted the complexity of the wine offer and the confusion of consumers regarding it.

In an earlier decision of 2015, the Bordeaux Court of Appeal recognized the risk of confusion between the CHEVAL BLANC trademark and the wine bearing the corporate name “EARL C. DE CHEVAL BLANC”. Indeed, the Court considered that the very high reputation attached to CHEVAL BLANC gave rise to a risk of confusion for the moderately attentive and competent consumer. Moreover, in its assessment of the likelihood of confusion, the Court held that the fact that a wine with protected designation of origin was marketed at a price significantly lower than the CHEVAL BLANC wine did not exclude this likelihood of confusion.

However, in our case, the risk of association between the PETRUS LAMBERTINI and PETRUS wines appears to be neglected for the benefit of a restrictive analysis of the existence of a risk of confusion between the products.

Anyhow, we note that the provisions of the French Consumer Code (in this case misleading commercial practices) remain an interesting basis for the defense of a trademark, which makes it possible to act in criminal matters.


Annabella BIFFI and Marion ALARY
Intellectual property lawyers at INLEX IP EXPERTISE – Lexwine.