“CHAMPAGNE,” in connection to wines, is a geographical indication that it is produced through certain local requirements and is grown from specific regions in France.
Keep Waddling International Pte. Ltd (the applicant) and its related companies have been using the trademark “PENGWINE” as their house-mark for their wines originating from Chile since April 2004. These wines have been sold to many countries, including Singapore and promoted through numerous media platforms.
These wines have been sold to many countries, including Singapore and promoted through numerous media platforms.
The applicant applied to register the mark below (the application mark) on March 28, 2017.
Comité Interprofessionnel du Vin de Champagne (the first opponent) is an association authorized under French law to represent and the country’s operators (including growers, cooperatives, and production houses) with respect to the geographical indication “CHAMPAGNE” worldwide.
Institut National de l’Origine et de la Qualité (the second opponent), a French national public administrative institution under the French Ministry of Agriculture and Food, works hand in hand with first opponent to implement French Policy on official signs of identification of the origin of the agricultural and food products internationally.
Comité Interprofessionnel du Vin de Champagne and Institut National de l’Origine et de la Qualité (the opponents) filed their Notice of Opposition on November 13, 2018.
Grounds of opposition
Section 7(4) of the Trade Marks Act. This section states that a trademark should not be published if it, for any instances, causes misleading information that may delude the public about its origin, nature, and/or quality.
Section 7(5) of the Trade Marks Act. This section states that a trade mark should not be registered if its use in Singapore is prohibited by any written law. This puts an emphasis on interested parties of goods that can be identified through geographical indication.
Section 8(7)(a) of the Trade Marks Act. A trademark shall not be registered if its use in Singapore is liable to be prevented by any virtue of the law protection an unregistered trademark or other sign used in the course of trade (i.e, the law of passing off).
Section 7(6) of the Trade Marks Act. This section states that a trademark should not be registered if the application is made in bad faith.
Decision on Section 7(4) of the Trade Marks Act.
Consumers who drink and purchase wines or sparkling wines are more likely to know the difference in the spelling of “champeng” and “champagne,” thus making them less likely to be deceived. The origin of the wine is also clearly indicated in the application mark, which states “wines of Chile.”
The Registrar specified that “champagne” is a standalone word, and is not the dominant mark in the application mark, hence the ground of opposition under Section 7(4) failed.
Decision on Section 7(5) of the Trade Marks Act.
The application mark does not “consist or contain” the word “champagne” and is not in any way identical with an earlier trademark. It also follows that the application mark does not contain the word “champagne,” which is a geographical indication. This becomes the second failure of the ground of opposition.
Decision on Section 8(7)(a) of the Trade Marks Act – Passing Off
The Registrar found that, on the facts, the use of the application mark would not result in any misrepresentation leading to deception and that the opponents would not suffer any damage arising from the use of the application mark.
Decision on Section 7(6) of the Trade Marks Act – Bad Faith
However, the use of the prefix “CHAM” is an allusion to the use of the methode champenoise, which is a known method of production used in the Champagne region in France to produce sparkling wines. The prefix is also chosen because of its similarity to “champagne,” making it a subject element for bad faith. Hence, the opponents succeed on this ground of opposition.
By: Denise Mirandah
This article was first published on Asia IP. For more info, please visit https://www.asiaiplaw.com/section/ip-analysts.