Sparkling Winemakers' Trade Mark Claim Loses Its Fizz

A recent trademark case concerning the trademark "PICCOLOMINI" (Mark) has provided guidance on the test for 'genuine use' in opposition proceedings which, in this case, was not satisfied. The case also serves as a useful a reminder for businesses registering trade marks and considering branding of the need to be aware, from the outset, of key trade mark laws to ensure they consider their branding against current trade mark legislation.

Case T‑20/15, Henkell & Co. Sektkellerei KG v European Union Intellectual Property Office

Opposition Proceedings

In summary, opposition proceedings are where a party opposes the registration of a new mark on the basis that the new mark is so similar to the opposing parties existing mark that there is a likelihood of confusion between the two i.e. old and new, marks. Typically, the opposing party will be required to provide evidence of genuine use of its earlier mark before it may claim that the marks are similar and that there would be a likelihood of confusion.

Proceedings

Henkell, a leading winemaker in the Sekt and Prosecco wine markets and the owner of the mark "PICCOLO" (Earlier Mark) opposed registration of the Mark in respect of sparkling wines.

As a result, in accordance with current trade mark law, Henkell was required to provide evidence of 'genuine use' of its trademark, according to the essential function of indicating the origin of the goods and services for which it was registered, otherwise known as the 'Nice classification' - see here, which was vital in this case as it was in relation to use in association with alcoholic beverages (except beers) in Nice Class 33.

Genuine Use

Henkell provided evidence of use of the Earlier Mark, which included, among other things, a statutory declaration by its marketing director confirming use of the mark in 20 Member States. The General Court held that the declaration carried limited evidential weight and should be supported by other evidence.

With regard to the other evidence provided by Henkell, the General Court considered the word 'Piccolo' to form part of internationally recognised wine terminology, referring to the size of a bottle. Additionally, PICCOLO was used in a descriptive manner, as opposed to being used as a key indicator of origin. Specifically, PICCOLO was typically used on its bottles in a secondary manner to the word "Henkell" in larger text which the court considered to be the dominant element of the combination of marks.

Unfortunately for Henkell, it could not produce sufficient evidence regarding use to persuade the General Court that there had been genuine use.  On the facts, the General Court considered Henkell to be the indicator of commercial origin, whilst PICCOLO was merely descriptive of the size of the goods.

Observations

An interesting observation in this case is that, whilst Henkell provided evidence to show the Earlier Mark had been used, to an extent, that use did not constitute use satisfying the essential function of a trademark due to the fact it was used in conjunction with and secondary to the Henkell Brand and other descriptive terms.

In this case the court focused on the graphical representation of the Earlier Mark on the bottles when considering whether genuine use had in fact been made of the trade mark. That is to say, the use of the Earlier Mark is not, alone, sufficient – that use must achieve the trade mark function of indicating commercial origin, which it did not in this case.

The Judgment of the General Court of the European Union in Case T‑20/15, Henkell & Co. Sektkellerei KG v European Union Intellectual Property Office (EUIPO) is available here.

If you have any questions on the above or trade mark law in general, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com