Keynotes learned from the “Champagne” trademark battleAAA IPRIGHT2
Champagne has always been one of the most favored drinks in the history of mankind. However, not all things that are too famous and good are ‘good’. As the decisions relating to the IP conflicts of champagne have come to a close, we now take a closer look at the keynotes learned from the “Champagne” trademark battle.
In the IP field, when something is too famous, there will be many parties that like to use that famous in order to sell their own products and gain profits. This is most common with well-known trademarks.
The shady parties will copy, replicate, make false products with low prices with the brand of the famous products/companies and sell it, utilizing the ‘cheap products best quality thinking’ of consumers.
This is a common infringement violation against trademark and brand but recently, as a final decision of the European Court of Justice and Thai DIP, the people have realized that the product name itself, “Champagne” is also something that can’t be ‘infringed’ upon.
The history of champagne
Wine has been made for over 7,000 years.
Effervescent wine or something that is known as the nature of champagne is also made for just as long since sealing wine before the fermentation is complete will innately produce it.
However, effervescent wine since thousands of years ago is not actually champagne as we know it today.
True sparkling wine is a wine that is clear from cloudy impurities.
It was invented in the Champagne region of France in the 17th century. As a constant debate seething with the question of who is the rightful inventor of the technique to make champagne, the perfection of the method that removes the unattractive clouds which had long bespoiled fizzy wine is widely credited, rightly or wrongly, to a monk and cellar master at the Benedictine Abbey of Hautvillers – Dom Pérignon (1638-1715).
Dom Pérignon has acquired a legendary status as the inventor of the sparkling champagne we know and love today, although the question of whether or not he is the true author of champagne remains heated.
In the Abbey near Rheims in France, a veritable revolution would occur, transforming the region’s fortunes and changing forever the production and popularity of sparkling wine.
Champagne was born and remains one of the most popular wines in over 300 years. With the creation of successful houses such as Ruinart, Moët, Veuve Clicquot, and Pommery, champagne has conquered all the kings, queens, and conquerors to become the single most famous wine in the world, a byword for elegance, celebration, and luxury.
IP battle of champagne
Although luxurious, champagne itself can’t escape the legal battle, as with many other famous brands/trademarks in the world.
Though this is, indeed, a particular story as few conflicts of IP nature have surrounded the product name itself, as in ‘champagne’.
The question here is what level of protection does ‘Champagne’ enjoy?
Is it a particular world like ‘water’ or ‘air’ that can’t be used by any organizations as a trademark?
Should any product or service called ‘Champagne’ be denied trademark registration?
Giving answers to these questions, the trademark registrar of Thailand or the DIP has replied affirmatively.
Protection of geographical indication in Asia
Champagne is one of the most famous and prestigious GIs in the entire world. As the rules of IP have been enforced strongly across the globe and especially in the Asia Pacific region, champagne is on the list of protected GIs in Asia, and Thailand is among them.
In the past decade, geographical indications have been of this region’s main concerns, surpassing other Intellectual Property such as trademarks, patents with an incredible margin.
From India to Cambodia, sui generis GI laws are flourishing. At the same time, free trade agreements have also provided Asian IP legislations with a GI flavor and enriched them with non-agricultural products.
Accordingly, the protection of geographical indications (GIs) has met fast-growing and notable success.
There have been thousands and thousands of registered products in this region. Champagne is not the exception. Particularly, ‘Champagne’ is even under many developed twinning programs with Asian GIs, such as Lamphun Brocade Thai Silk.
Champagne legal problem
Because of Champagne’s fame and history in the world, its unfair use is not confined to the trade of wines and alcoholic beverages.
Throughout decades, the Comité Interprofessionnel du Vin de Champagne (CIVC) has brought and won many cases against unrelated goods and services across the globe.
Most of the cases are against IP infringers, the producers and sellers of many non-champagne products such as cigarettes, perfumes, eyeglasses, shampoos, and jewels. These individuals and organizations have tried to use the fame of champagne for their own advantages, appealing and misleading the consumers about the nature of their businesses.
Accordingly, they have been held liable for unfairly exploiting the fame and reputation of ‘Champagne’ to instill their goods with the characteristics, authenticity, and qualities of the famous sparkling wine champagne.
Recent battles of champagne in the IP field
As part of the long strings of battles to protect the ‘champagne’ name, recently, the court’s decision in favor of the protection of the ‘champagne’ name against marks for both products and services evoking its name has ‘sparkled’ quite a wave in the world.
In the European Union, the EUIPO has rejected the registration of the trademark CHAMPAGNOLA for bakery goods and services.
In another case initiated by the CIVC, the mark CHAMPAWS for pet beverages was rejected.
In September, as the push needed to the final conflict between the CIVC and a Spanish restaurant and catering chain with the mark called Champanillo, the Court of Justice of the European Union (CJEU) ruled that the protection afforded to ‘Champagne’ extends to services. This decision has given the Comité Interprofessionnel du Vin de Champagne a huge spirit boost to its call which is to protect the quality and image of champagne across the globe.
For the Court of Justice of the European Union (CJEU), the concept of ‘evocation’, within the meaning of the EU legislation, did not require that the product covered by the protected designation of origin ‘Champagne’ and the product or service covered by the disputed name be identical or similar (Case C-783/19).
On the other side of the world, in Thailand, the DIP has also given favored decisions to the CIVC and the Institut National de l’Origine et de la Qualité (INAO) against the mark “Cru” with the word ‘Champagne’ under, filed by a leading Thai hotel and resort chain for bar and restaurant services in Class 43.
The registrar agreed with the opponents’ reasoning and rejected the mark on these following grounds.
Although ‘Cru’ was the most prominent and distinctive element, the mark contained the disclaimed term ‘Champagne’, which is a registered GI in Thailand that is prohibited from registration as a trademark.
In addition, the term ‘champagne’ itself was very likely to cause confusion among consumers. If the mark is registered, the consumers would believe that the services provided by the applicant consisted of the supply of sparkling wine from the Champagne region exclusively.
Accordingly, the mark was contrary to public order or public policy and could not be registered.
A few weeks later, the registrar has also issued a similar decision in another opposition action.
This case is between, once again, the CVIC and a leading Thai operator of seafood counters for bar and restaurant services that registers the mark in Class 43, subject to a disclaimer for ‘Champagne’
Impacts from the cases to the protection of GIs
With the cases won from different parts of the world, the Champenois have welcomed the news as these decisions will provide ‘Champagne’ with the optimum level of protection against misuse of the name.
In addition, these decisions are not just good news for Champenois and champaign lovers in particular but it is also a great sight to behold for GI owners in general as now, they will have a legal ground to aid them in future conflicts regarding GIs occurring in these jurisdictions.
Capitalizing on the recent preliminary ruling issued by the European Court of Justice in favor of “Champagne” against “Champanillo”, stating that it is now not required that the product covered by “Champagne” and the product or service covered by “Champanillo” be identical or similar (Judgment in Case C-783/19), 2 recent oppositions filed in Thailand, the Comité Interprofessionnel du Vin de Champagne (CIVC) and the Institut National de l’Origine et de la Qualité (INAO), we have learned the following:
- It is now absolutely prohibited to register a mark containing a registered GI in Thailand, regardless of the mark is applied for identical goods or not as those for which the GI is registered.
- The disclaimer of a GI which is also a geographical name is not an acceptable condition for allowing the registration of a mark comprised of a GI registered in Thailand.
- It is against public order or public policy to register a mark containing a GI, registered or not in Thailand, regardless the goods or services are of the same description as those for which the GI is registered or known if there is a likelihood of public confusion.
*** Other Articles***
– You could see The trademark fee in EU and UK here.
– You could visit here to see Procedure of Trademark in European Union.
– You could visit here to check Required documents of filing trademark in European Union.
– You could read 06 Frequent Questions About Filing Trademark In Thailand here.
– You could visit here to see Power of Attorney of trademark in Thailand here.
– You could read 07 Legal Notes To Thailand Trademark Law You Need To Know here
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