The Chianti Classico Wine Consortium celebrates victory at the EU General Court, which in a 14.4.21 ruling upheld the refusal to register a trademark with a rooster effigy in the class of alcoholic beverages. (1) An in-depth study.
Rooster mark on wines, registration rejected
On 9/21/17, Rome-based Berebene Srl had filed an application with EUIPO(European Union International Property Office) to register a figurative mark, ‘GHISU’, in Class 33 of the Nice Agreement (alcoholic beverages, excluding beers). On 12/21/17, the Chianti Classico Wine Consortium filed an objection to the application, citing its similarity to the Italian collective mark ‘Chianti Classico,’ registered on 1/20/14. (2)
On 18.1.19, the EUIPO Opposition Division granted the request of the Chianti Classico Wine Consortium. On 14.3.19 Berebene Srl filed an appeal, which was, however, dismissed on 23.1.20 by the First Board of Appeal EUIPO. Berebene Srl appealed this decision to the EU Tribunal, which, however, on 14.4.21 upheld the previous EUIPO decisions.
Question of law
‘Registration is also excluded if the mark is identical or similar to the earlier mark, regardless of whether the goods or services for which registration is sought are identical, similar or not similar to those for which the earlier mark is registered, if,
– in the case of an earlier EU trademark, the latter is the trademark with a reputation in the Union or,
– in the case of an earlier national trademark, the latter is a trademark with a reputation in the member state in question
and the use without due cause of the registered mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.’ (EU Reg. 2017/1001, Article 8.5).
Brand recognition and brand similarity, the Chianti Classico case
The Chianti Classico brand has a high reputation, demonstrated by the Consortium with extensive documentation, which is associated with the territory and the production of its wine. The EU General Court, in upholding the EUIPO Board’s decision, thus pointed out that the inherent distinctiveness of the earlier mark must be assessed from the perspective of consumers who associate the image of the rooster in profile precisely with Chianti.
The visual and conceptual similarity between two trademarks associated with the wines- bearing image of a whole rooster in profile, in relief, and in central position- therefore carries a non-hypothetical likelihood of confusion. And thus cause an actual, undue benefit to the plaintiff company. Regardless of the figurative details (e.g., black and white vs. color, linear or historiated background) and whether the plaintiff intended to apply that mark to a white wine instead of a red wine.
Conclusions
Finally, the EU General Court reiterated that the trademark has an intrinsic economic value deserving of protection, distinct from that of the goods or services for which it is registered. To conclude by upholding the EUIPO decision and ordering the applicant to pay legal costs.
The decision thus confirms the importance of performing appropriate prior art studies before registering trademarks. But also the futility and high costs of persisting in attempts to register similar trademarks in the same classes of goods and/or services. The design and registration of a new, authentically distinctive logo can enable value to be created at a lower cost than litigation, quickly and without the risk of losing.
Dario Dongo and Martina Cavarzere
Cover image by Carlo Macchi, 10/22/20 on Winesurf https://www.winesurf.it/
Notes
(1) EU Tribunal, Tenth Chamber. Judgment 14.4.21 in Case T-201/20, Berebene Srl v. European Union Intellectual Property Office (EUIPO), with input from the Chianti Classico Wine Consortium. https://curia.europa.eu/juris/document/document.jsf?text=&docid=239872&pageIndex=0&doclang=IT&mode=req&dir=&occ=first&part=1&cid=4881527
(2) Reg. EU 2017/1001, on the European Union trademark. Consolidated text as of 6/16/17 at https://eur-lex.europa.eu/legal-content/IT/TXT/?qid=1621544112796&uri=CELEX%3A32017R1001#
Graduated in food technology, she works on quality control in a food company in Piedmont. She is an expert on the subject, she studies as a lawyer and food safety consultant.
Dario Dongo, lawyer and journalist, PhD in international food law, founder of WIISE (FARE - GIFT - Food Times) and Égalité.
