Europe’s Court of First Instance’s verdict that wine and wine glasses are different products seems unexceptional. But what if it means that Ireland’s iconic “Waterford” brand and CTM cannot be used to stop “Waterford Stellenbosch” wine glasses? James Pond asks what’s the point of a CTM.
Topic: Brands
Who: Waterford Wedgwood plc and Assembled Investments (Proprietary) Limited
Where: Luxembourg
When: June 2007
Law stated at: September 2007
What happened:
Waterford Crystal, the well-known Irish maker of luxury glassware and china, has lost the latest round of its trade mark battle with South African winemaker, Assembled Investment Limited (AI), over the latter's attempt to register the words WATERFORD STELLENBOSCH as a Community trade mark (CTM). At stake was whether or not Waterford Crystal, as owners of an existing CTM registration for the word WATERFORD in respect of wine glasses, could prevent AI from obtaining their own CTM registration for WATERFORD STELLENBOSCH in respect of wines.
The battle has been working its way through the CTM appeal process since 2000, and prior to the decision of the Court of First Instance (CFI) the scores were tied at one win each. However Waterford Crystal have now had a set-back and lost the CFI decision, although it appears that they are now appealing this judgment to the European Court of Justice (ECJ), the final court of appeal available for a definitive judgment.
Wine and wine glasses not similar?
European trade mark law allows the owner of an existing trade mark registrations to prevent third parties from registering an identical or similar trade mark in three circumstances, namely:
(i) where the trade marks are identical, and are registered/applied for in respect of identical goods/services,
(ii) where the trade marks are identical or similar, and are registered/applied for in respect of identical or similar goods/services AND there is a likelihood of confusion on the part of the public, and
(iii) where the trade marks are identical or similar, and are registered/applied for in respect of dissimilar goods/services AND the earlier trade mark has a reputation which the subsequent trade mark would without due cause take unfair advantage of, or be detrimental to.
The latest CFI judgment was only in respect of ground (ii), and the issue at stake was whether or not "wine glasses" and "wine" could be said to be similar goods for the purposes of trade mark opposition proceedings. On the one hand, it is clear that the two types of product are manifestly different from each other in respect of their physical properties (and are thus neither in competition with one another nor substitutable) and are generally sold through different distribution chains. On the other hand, however, the two products are also clearly complementary, and are frequently found together.
The CFI ultimately decided that because wine could be drunk from other vessels, and that wine glasses could be used to drink other liquids, the complementarity between the products was not sufficiently pronounced for consumers to view the goods as similar for trade mark purposes.
Why this matters:
This latest decision is a timely reminder that the owner of a registered trade mark is not necessarily given a complete monopoly over that trade mark for all purposes and uses. Many trade marks co-exist with identical trade marks as they are used and registered in completely different fields of activity. A trade mark owner should always therefore ensure that their registration is drafted as widely as possible to maximise the rights granted.
The decision also highlights just how slow the trade mark process can be – the original application for WATERFORD STELLENBOSCH was filed in December 1999, and almost 8 years later the application is still in limbo awaiting final determination of the opposition brought by Waterford Crystal.
