Using a trademark as a decorative element is not the best option for its protection in the EU

The General Court of the European Union has ruled in the case T‑323/21 Castel Frères v Shanghai Panati Co., which reminds us how essential is one registered mark to be used correctly in order for its protection to be viable.

The case has the following background:

On 29 May 2018, Shanghai Panati Co filed an application with EUIPO for revocation of the EU trademark that had been registered further to an application filed on 17 March 2008 for the following figurative sign:

The goods covered by the contested mark, in respect of which a declaration of invalidity was sought, were inter alia in Class 33 of the Nice Agreement: ‘Still wines’.

The ground relied on in support of the application for revocation was the lack of genuine use of the contested mark within a continuous period of five years.

Evidence was submitted by Castel Frères that the mark was used for wine labels in the following way:

On 3 April 2020, the Cancellation Division rejected the application for revocation.

On 24 April 2020, Shanghai Panati Co. filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

By the contested decision, the Board of Appeal upheld the appeal and revoked the contested mark. The Board of Appeal found, in essence, that the differences between the contested mark and the mark as used were such as to alter the distinctive character of the contested mark.

The Court upheld this decision.

According to the Court, it must be borne in mind that the contested mark in its registered form is a figurative mark consisting of three characters from the Chinese alphabet. As the Board of Appeal correctly notes the relevant public will not be able to verbalise or to memorise those Chinese characters, which will rather be perceived as meaningless, abstract signs or as decorative elements referring to China or to Asia. It is appropriate, therefore, to find that, with regard to the goods at issue, the Chinese characters forming the contested mark have a lower-than-average degree of distinctive character.

In that regard, it must be emphasised that on the product packaging or in the advertisements, the contested mark, which appears in a very small size, is almost systematically accompanied by the word elements ‘dragon de chine’ and by the representation of a dragon, which appear together and are very close to one another. Moreover, in so far as the contested mark is composed of three characters from the Chinese alphabet, in a very small size, the added elements are always clearly visible and dominate the overall impression.

The Board of Appeal was therefore right to find that the contested mark as used, that is to say, in an ancillary position and in a much smaller size than the distinctive and dominant word elements ‘dragon de chine’ and the representation of a dragon, would be perceived by the relevant public as a decorative element and not as an indication of origin of the goods.

That finding cannot be called into question by the argument that, in essence, it is common in the wine sector for two or more trademarks to be used jointly and autonomously on labels, with or without the name of the manufacturer’s company, as is the case here with the mark Dragon de Chine. It must be stated that the word elements ‘dragon de chine’ are always clearly visible in that they occupy a dominant position in the overall impression created by the mark as used. In any event, even if it were established that those elements are a trademark, the fact remains that that is not capable of weakening the alteration by those terms of the distinctive character of the contested mark, since the relevant public no longer perceives those three characters from the Chinese alphabet as an indication of the origin of the goods in question, in accordance with the case-law.

Having regard to the above examination of the distinctive and dominant character of the added elements, based on the intrinsic qualities of each of those elements and on the relative position of the various elements, it must be held that the variations in use demonstrated alter the distinctive character of the contested mark as registered, as the Board of Appeal rightly found.

This decision comes to remind us that one trademark should always be used as an indication of trade origin and not as a complimentary or decorative element. In a similar case, Apple lost a dispute regarding its trademark Think Differently because of the way the mark was used on the package of the product.

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Can the Champagne PDO protection covers services?

The Advocate General of the European Court Giovanni Pitruzzella  issued his opinion on the Case C‑783/19 Comité Interprofessionnel du Vin de Champagne v GB. 

In brief, this case targets the question whether protection of a product as a geographical indication can cover related services too. The dispute has the following background:

The CIVC, the appellant in the main proceedings, is a semi-public organisation with legal personality, recognised under French law and responsible for safeguarding the interests of champagne producers. The CIVC brought an action before the Commercial Court, Barcelona, Spain seeking an order requiring GB, the respondent in the main proceedings, to cease use of the sign CHAMPANILLO, including on social media (Instagram and Facebook), to remove any insignia or advertising or commercial document featuring that sign from the market and from the internet, and to cancel the domain name ‘champanillo.es’. GB appeared before the court claiming that the sign CHAMPANILLO is used as a trade name for catering premises (tapas bars situated in the Autonomous Community of Catalonia), and that there was no likelihood of confusion with the products covered by the name ‘Champagne’ and no intention of taking unfair advantage of the reputation of that name.

The Commercial Court, Barcelona rejected all of the CIVC’s claims. It held that the use of the sign CHAMPANILLO did not constitute an evocation in breach of the ‘Champagne’ PDO, since it was intended to designate not an alcoholic beverage but catering premises – where champagne is not sold – and therefore products other than those protected by the PDO and targeting a different market. In the grounds of that judgment, the Commercial Court, Barcelona referred to the guidance provided by the Supreme Court, Spain in a 2016 judgment, in which it was ruled that the use of the term CHAMPÌN to market a non-alcoholic fizzy fruit drink consumed at children’s parties did not infringe the ‘Champagne’ PDO on account of the difference between the products concerned and their target market, despite the phonetic similarity between the two signs. 

The CIVC appealed against the judgment of the Commercial Court, Barcelona before the Provincial Court, Barcelona, Spain. The Provincial Court explains that: (i) GB has twice attempted to register the sign CHAMPANILLO as a trade mark with the Spanish patent office and that those applications were rejected, by decisions of 8 February 2011 and of 14 April 2015, following opposition from the CIVC; (ii) GB uses the image of two champagne coupes containing a sparkling beverage as a graphic medium to advertise its premises; (iii) the CIVC produced documents certifying that, until 2015, GB solda sparkling wine called ‘Champanillo’ on its premises and that sales ceased only following action taken by the CIVC.

The referring court notes that both Article 13 of Regulation No 510/2006 and Article 103 of Regulation No 1308/2013 protect PDOs in relation to products, with the sole exception of Article 103(2)(b) which also mentions services. The referring court states that it has doubts as to the scope and correct interpretation of the provisions of EU law on the protection of a PDO in a situation where the sign allegedly in conflict with that name is used in the course of trade to designate not goods but services.

In those circumstances, the Provincial Court, Barcelona decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Does the scope of protection of [a] designation of origin make it possible to protect that designation of origin not only as against similar products but also as against any services which may be associated with the direct or indirect distribution of those products?

(2) Does the risk of infringement by evocation, to which the articles in question of the Community regulations refer, necessitate in the first instance a nominal analysis[,] to determine the effect that this has on the average consumer, or[,] in order to examine that risk of infringement by evocation[,] is it necessary to establish first of all that the products at issue are the same or similar or are complex products whose components include a product protected by a designation of origin?

(3) Must the risk of infringement by evocation be defined using objective criteria when the names are exactly the same or highly similar or must that risk be calibrated by reference to the products and services which evoke and are evoked in order to conclude that the risk of evocation is tenuous or irrelevant?

(4) In cases where there is a risk of evocation or exploitation, is the protection provided for in the legislation referred to specific protection related to the special features of the products concerned or must the protection be connected to the provisions on unfair competition?’

The Advocate’s opinion:

Article 103(2)(b) of Regulation No 1308/2013 of the European Parliament and of the Council of 17 December 2013 establishing a common organisation of the markets in agricultural products must be interpreted as meaning that acts of misuse, imitation or evocation of a PDO in relation to services may also come within the scope of that provision.

In order to determine whether there is an evocation of a protected designation of origin within the meaning of Article 103(2) of Regulation No 1308/2013, it is not necessary to establish, first of all, that the product covered by that designation and the product or service covered by the disputed sign are identical or comparable or that the latter product includes among its ingredients the product covered by the protected designation of origin. However, whether or not the products are identical or comparable is a factor that the national court is required to take into consideration, together with any other relevant factor, when assessing whether there is an evocation within the meaning of that provision.

The protection against evocation provided for in Article 103(2)(b) of Regulation No 1308/2013 is not limited to cases where the practice giving rise to evocation satisfies the conditions for an act of unfair competition within the meaning of the relevant provisions of the applicable national law.

Michelin won a domain name dispute for michelin-wine.tokyo

One of the biggest tyre manufacturers in the world the French company Michelin won a domain name dispute before the WIPO Arbitration and Mediation Center.

The case concerns a registered domain for michelin-wine.tokyo by an individual in 2020. This domain was used for website that offered wine delivery in Japan with the following message: “Starred sommelier carefully selected wine delivery service Michelin Starred selection. We will deliver 2 bottles of hidden wine that has not arrived in Japan every month”.

An interesting fact is that the French company publishes the MICHELIN Guide, that was launched for the first time in 1920 as a trip guide for motorists helping them to plan their trips. Later this guide was stared to be used for awarding stars for fine dining establishments. Nowadays Michelin Stars are one of the most valuable recognition for every restaurant around the world.

The company own several Michelin trademarks for Japan in classes 8, 11, 16, 20, 21, 24, 26, 35, 36, 39, 40, 41, 42, 44 и 45.

Finding the newly registered domain, the company filed a complaint with the WIPO Arbitration and Mediation Center. According to Michelin this domain infringes the rights over the earlier trademarks, what’s more the domain includes these marks entirely in its composition. Taking into account the nature of the website under this domain name, it could create consumer confusion taking advantages of the Michelin longstanding reputation.

WIPO Arbitration agreed and ruled for the transfer of the domain name to the French company. According to WIPO:

The Complainant owns international and Japanese trademark registrations for MICHELIN. The disputed domain name consists of “michelin”, “-wine” and a new gTLD, “.tokyo”. The disputed domain name entirely incorporates the Complainant trademark MICHELIN.

In the disputed domain name, the part “michelin” naturally attracts Internet users’ attention, and it is clearly recognizable. Moreover, the addition of “-wine” does not prevent a finding of confusing similarity.

The Complainant has never authorized the Respondent to use and register its trademark, or to seek registration of any domain name incorporating the Complainant’s trademark. Nevertheless, the Respondent’s website offers wine delivery services with such a message as “Starred sommelier carefully selected wine delivery service Michelin Starred selection. We will deliver 2 bottles of hidden wine that has not arrived in Japan every month”. The Respondent’s use of the disputed domain name cannot be recognized as use in connection with a bona fide offering of goods or services.

The Respondent is an individual whose name is Mai Miyota. The Panel sees no similarity between the Respondent’s name and the disputed domain name. Therefore, the Panel finds that the Respondent has never been commonly known by the disputed domain name.

The Respondent’s website offers wine delivery services with the above mentioned confusing message, which would likely mislead consumers to recognize the Respondent’s website as somehow related to the Complainant. Therefore, the Panel finds that the Respondent does not make a legitimate noncommercial or fair use of the disputed domain name. Rather, it is clear to the Panel that the Respondent has intent for commercial gain to misleadingly divert consumers.

Considering that the Complainant is famous for its publication “MICHELIN Guide”, the disputed domain name is easily associated with the Complainant. The composition of the disputed domain name affirms the likelihood of confusion (as it includes the trademark MICHELIN in its entirety with the added term “wine”), because it is well-known that MICHELIN Guide awards stars for fine dining establishments, and fine dining establishments often offer wines. In the present case, even the gTLD, “tokyo” may strengthen the confusion because Tokyo is a destination of many MICHELIN Guide users, and the Internet users can perceive the disputed domain name as somehow associated to the Complainant.

Source: WIPO.

Is NOSECCO different from PROSECCO for wines?

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One interesting news from the UK shows clearly how powerful can be the protection of geographical indications.

In the case at hand, Les Grands Chais De France applied for an international trademark NOSECCO for class 32 – non-alcoholic wines; non-alcoholic sparkling wines, where the UK is a designated country.

Against this application, Consorzio di Tutela della Denominazione di Origine Controllata Prosecco filed an opposition based on registered geographical indication for PROSECCO.

As it is well-known, Prosecco is a famous wine that can be produced only in some areas in Italy.

The UKIPO upheld the opposition and refused the NOSECCO trademark application stating that both signs are similar for identical goods.

While Les Grands tried to claim that these marks are different based on the different beginnings, the Patent Office disagreed. In this case, there is a visual and phonetic similarity which can create consumers ‘ confusion.

This case comes to show that geographical indications protection can be invoked not only against identical signs but against similar too, especially where there is a strong reputation of the earlier indication among the consumers.

Source: Claire Keating – Marks & Clerk.

The General Court of the EU found similarity between trademarks for wine

The General Court of the European Union has ruled in case Case T‑239/19 Vinos de Arganza v Nordbrand Nordhausen GmbH. It concerns an attempt for registration of the following combined EU trademark for class 33 – wine:

Against this application, an opposition was filed based on an earlier German trademark BELCANTO for class 33 – Alcoholic beverages.

EUIPO upheld the opposition entirely. According to the Office, the goods for both marks were identical. From a visual point of view, both signs were similar to a low degree. Phonetically they were similar because of their end sounds. Conceptually both trademarks were neutral because they had no meaning for the German-speaking public.

The Court confirmed this decision.

What is interesting here is the fact that although the beginning of the marks has a bigger impact on such comparisons in the case at hand the different letters, in the beginning, weren’t able to overcome the entire possibility for consumer confusion between the signs.

Chile won a dispute against Peru for the term PISCO

The Chilean vineyard Sociedad Anónima Viña Santa Rita won a dispute before the UK patent office regarding its following trademark for class 33 that contains the word PISCO:

The Peruvian IP office objected to this registration claiming that only producers from Peru can use the term PISCO to label their products in particular wine.

According to the Chilean vineyard, this wasn’t the case due to the fact that wine under the same name had been producing in Chily for centuries.

The UKIPO ruled that in the case at hand there was no risk for consumer confusion because it was highly unlikely for them to connect the term PISCO only with Pery. In addition, taking into account the whole mark the likelihood of confusion was even smaller.

Similar disputes between Chile and Pery exist in India and Australia too.

Source: WIPR.

A wine battle before the General Court of the EU

The General Court of the European Union ruled in the Case T‑102/17, Cantina e oleificio sociale di San Marzano v EUIPO.

This case concerns an attempt by the Italian company  Cantina e oleificio sociale di San Marzano to register the following European trademark for Class 33 – wine:

Against this mark, an opposition was filed by the Spanish company Miguel Torres based on an earlier mark Sangre de Toro for the same goods.

Initially, EUIPO dismissed the opposition, but after that the Board of Appeal upheld it.

The applicant appealed before the General Court, stating that there are no similarities between the goods, taking into consideration the fact that both wines have different geographical origin, different distribution and so on.

The Court dismissed these arguments as groundless and upheld the opposition.