Last year we observed that the mark ‘NOSECCO’, used in relation to a non-alcoholic alternative to prosecco, had been successfully opposed on the basis that it infringed the protected designation of origin (PDO) ‘PROSECCO’.
The demand for low or non-alcoholic drinks has not abated since then and this has seen businesses trying to capitalise on other markets. As such, in 2018, Woof and Brew Limited (the Applicant), a UK producer of healthy non-alcoholic tonics for pets, (presumably) looked to fill this gap in the market and filed an international trade mark registration application for the word mark ‘CHAMPAWS’.
However, the application was opposed on the basis that it infringed on the rights of the PDO ‘CHAMPAGNE’. This means that only products that are produced, processed, and prepared in the Champagne area of France, and which have distinct characteristics of that area, can call themselves ‘Champagne’. The use of the name ‘CHAMPAGNE’ is protected and promoted by Comité Interprofessionnel du Vin de Champagne and Institut national de l'origine et de la qualité (the Opponents).
Applicable Law
In opposing the Applicant’s mark, the Opponents invoked Article 8(6) of the EU Trade Mark Regulation. This states that a trade mark applied for must not be registered if:
(1) it is an application for a trade mark with a designation of origin or geographical indication, and
(2) that designation of origin or geographical indication comes with the right to prohibit the use of a subsequent trade mark.
‘CHAMPAGNE’ was first recognised as a PDO by the EU in 1973 and it is now protected under the Wines Regulation (Regulation 1308/2013). The rights granted by a PDO include protection against:
1. any direct or indirect use of a protected name; and
2. any misuse, imitation or evocation.
As a result, the Opponents argued that the Applicant’s mark evoked the earlier PDO as there was a degree of visual and phonetic similarity between ‘CHAMPAW’ and ‘CHAMPAGNE’ and such evocation exploited the reputation of the PDO ‘CHAMPAGNE’.
Court’s Decision
For a PDO to be infringed, consumers must establish a link between the term used to designate the contested goods (i.e. CHAMPAWS) and the products whose designation is protected (i.e. wines). Such link must be sufficiently clear and direct; a mere association with the protected geographical indication or geographical area is not sufficient.
In assessing whether the Applicant’s mark infringed the PDO, the Court considered the aural, visual, and conceptual relationship between the two marks and the degree of proximity of the goods concerned. The court found that:
• Aurally, the pronunciation of the first syllable for both marks (‘CHAM’) are identical and the following two letters (‘PA’) are also identical, which reinforces the similarities between the marks. The different parts of the marks (‘GNE’ and ‘WS’) tend to be memorised less by consumers and therefore the marks were considered similar to a higher than average degree.
• Visually, the marks coincide in their first six letters (‘CHAMPA’), they are of a similar length and only differ in respect in their last three (‘champaGNE’) and two letters (‘champaWS’). The coincidences at the beginning of the marks are what consumers generally focus on and this catches the attention of the reader. Therefore, the marks were deemed visually similar to a higher than average degree.
• Conceptually, the PDO refers to a region of France and ‘CHAMPAWS’ would be perceived by a significant part of the (European) public as a meaningless term. The fact that the English-speaking public may single out ‘CHAMPAWS’ as being clearly linked to goods for pets was not deemed capable of offsetting the visual and phonetic similarities.
It is for these reasons that the court found that the similarities between the marks, and the proximity between the goods, was sufficient for the public to make a clear and direct connection between the marks. The court also placed importance on the Applicant’s marketing strategy, which built on the evocation between goods which applied the ‘CHAMPWS’ mark and Champagne wines (i.e. an image of prestige, luxury, festivities and glamour).
The application to register CHAMPWS was therefore rejected.
Conclusion
This case illustrates the strong rights attached to PDOs and emphasises the importance which should be placed on conducting thorough research before applying to register a trade mark.
This case will be one to keep an eye on as, at the date of writing, the Applicant’s UKTM for CHAMPAWS was entered in the UK Register of Trade Marks in February 2019 and appears to have been uncontested. It could therefore still face opposition in the future from the Opponents on the same grounds as the EUTM opposition.
Of more general interest is the court’s consideration of aural, visual and conceptual similarities. This method of analysing and comparing different marks can be very helpful for businesses when weighing up whether there has been a possible infringement or not (there can be no claim if the marks are not at least similar).
If you would like to discuss any trade mark or copyright issues that your business might be facing, then please contact George Duncan at george.duncan@ilaw.co.uk.
