Trademark opposition in the wine sector
Opposition to trademark registration in France must be filed within two months of publication of the trademark application, as established by Article L712-4 of the French Intellectual Property Code.
Opposition in the wine sector
A trademark application for ALEXANDRINE CHEVIGNY ROUSSEAU was published at the French National Institute of Industrial Property (INPI). The owner of the earlier semi-figurative trademark CHEVIGNY filed opposition to the registration of this trademark. The products covered were identical, namely wines.
The opposition procedure underwent significant reforms following the transposition of Directive 2015/2436 of December 16, 2015, harmonizing member state legislation on trademarks.
Under Article L.712-4 of the Intellectual Property Code, opposition may be based on:
- an earlier trademark pursuant to Article L. 711-3(I);
- an earlier trademark enjoying renown pursuant to Article L. 711-3(I);
- a company name or trade name if there is a likelihood of confusion in the public’s mind;
- a trade name, business sign, or domain name with more than local scope, if there is a likelihood of confusion;
- a registered geographical indication.
In its decision of August 1, 2024 (OP 24-0464), the INPI first compared the signs at stake. Visual and phonetic differences were noted. The differences were primarily conceptual: the contested application evokes a woman, while the earlier mark designates only the term Chevigny, which evokes a geographical name.
The presence of a coat of arms is not sufficient to immediately link the term Chevigny to a surname. The INPI considers that the coat of arms could equally identify a geographical location, as is the case for Monaco.
The signs produce a different overall impression. In the contested application, the term Chevigny is neither isolated nor emphasized but rather appears in characters identical to the other terms. The sign will therefore be perceived in its entirety, without isolating the term Chevigny, which lacks a specific position.
The applicant is familiar with these procedures. He successfully obtained the cancellation of the DOMAINE PASCAL CHEVIGNY trademark in 2020 in Class 33 (wines). However, he lost his opposition proceeding against the registration of the CHATEAU CHEVIGNY LES TOURELLES trademark for arguments similar to those in the present decision.
The INPI concluded that there is no likelihood of confusion between the two trademarks. This decision may be surprising, given that Chevigny is not a well-known wine estate.
Assessment of consumer attention for wine trademarks
This decision is particularly interesting, as it reminds the specific assessment of consumer attention regarding wines.
In the wine sector, consumers are accustomed to comparing composite names that partly include identical terms, whether family names or geographical names.
According to the INPI, consumers therefore pay particular attention to wine trademarks, even if they are not specialists in the field: “They will be all the more able to differentiate the signs at issue which possess significant visual, phonetic and conceptual differences.”
This assessment of consumer attention regarding wines has already been affirmed by the INPI on several occasions. Some commentators consider that this is only true for fine wines or when the consumer can detect the presence of a PDO (Protected Designation of Origin) or PGI (Protected Geographical Indication).
Divergent approaches: INPI vs. European courts
However, certain French and European courts do not share this assessment. The General Court of the European Union held that wines are intended for a large public, given their distribution in supermarkets as well as cafés, and are therefore everyday consumer goods.
The relevant public is the average consumer of mass consumption products. This consumer, normally informed and reasonably attentive, will exercise a reasonable level of attention toward wines, as the Court held on May 14, 2012 in the case involving trademarks CA’ MARINA and MARINA ALTA.
The French Court of Cassation has held that the likelihood of confusion between two trademarks must be assessed based on the perception of the average consumer of the category of products in question, normally informed and reasonably attentive and observant. Accordingly, an appellate decision was reversed for having held, concerning wines with Protected Designation of Origin, that the relevant consumer is a connoisseur of fine wines (Cass. com., September 6, 2016, n° 14-25.692).
The concept of the “average consumer” in trademark law has been further clarified by European jurisprudence:
- When comparing two signs in wine trademark cases, both solid knowledge and complete ignorance can dispel the likelihood of confusion, as noted by the Paris Court of Appeal in wine trademark disputes
- Recent decisions by French Courts of Appeal, confirming INPI opposition decisions, have rejected likelihood of confusion between signs sharing common distinctive elements, noting that reasonably attentive consumers can distinguish between wines from different regions
The evolution of this jurisprudence reflects the ongoing tension between protecting trademark rights and recognizing consumer sophistication in the wine sector, a balance that continues to be refined through case law from both national and European jurisdictions.
These divergences demonstrate the importance of consulting an intellectual property attorney. They know how to find the decisive arguments depending on the court or office concerned, based on case law. This is essential when divergences exist, as here, regarding the assessment of consumer attention.
Stéphane Bellec, Attorney, Partner Cabinet De Baecque Bellec
Intellectual property attorney
Tél. + 33 (0) 1 53 29 90 00