The Wine brands

• Four terms may designate only PDO wines. They are the terms château, clos, cru and hospices; while noting that the last of these words does not appear in the list in Annex VI to Regulation (EU) 2019/33, which may be a source of difficulties^[15], it must also be known that “clos” may also be used to designate a PDO wine if the vines are “effectively delimited by an enclosure formed by walls or live hedges” or “come under a PDO containing this word” (e.g. Clos de Tart, Clos de Vougeot, etc.), and that, unless it “designates an estate that has acquired its reputation under this name for 10 years”, the word “cru” may also be used in accordance with the specifications of the PDO to designate a unit larger or smaller than the latter^[16].

          With the latter, indeed, the distributor makes his turnover on the commercial value of the mark more than on the intrinsic qualities of the product which, by hypothesis, is not an estate product. It is therefore understandable that with commercial marks filing is an imperative necessity, whereas the interest in doing so must be positively established in relation to estate marks, because at first sight it is not obvious. Moreover, if one decides to file one’s mark, as the most elementary prudence requires, it must still be done correctly, because only a valid mark can found an infringement action or opposition proceedings. It would indeed be clumsy, to say the least, to expose oneself to a counterclaim for invalidity of the mark relied upon from a mocking infringer. Thus, the interest of filing (p. 3) is very directly dependent on its regularity (p. 5).

 

INTEREST OF FILING 

         A word laden with prestigious connotations ends up losing all attractive power if it is used too much. It is precisely to avoid this state of affairs that the public authorities have regulated the use of the talismanic words of the wine world, and what has happened to common nouns like these may just as well affect proper names. In this field, the tarnishing mentioned above is called dilution. This notion emerged in the late 1920s in the United States and the best illustration that can be offered is the one given by its inventor, H.-J. Schechter, in 1932 before a specialist committee of the US Congress: “For example, if Rolls Royce restaurants, Rolls Royce cafeterias, Rolls Royce trousers and Rolls Royce candy are tolerated, in ten years’ time there will be no more Rolls Royce mark”. This is the viewpoint of the holder of the cheapened name. From the viewpoint of the promoter of the tarnishing process, one speaks of free-riding, since it is tempting, in order to start up at little cost, to take advantage of another’s reputation. These two notions are the obverse and reverse of the same coin; they are defined in points 73 and 74 of the Interflora judgment of the Court of Justice of the European Union (CJEU 22 September 2011, Case C-323/09).

          Taking into account the dilution and free-riding that affect the attractive power of a name, positive law adapts its remedies to the ills it undertakes to treat. Thus, as experience shows the irreversibility of the dilution process^[17], the Luxembourg Court (ECJ 27 November 2008, Intel, Case C-252/07) ruled, at point 38 of the judgment cited, that its potential victim “cannot be obliged to wait for it actually to occur in order to be able to prohibit the said use”.

          This solution is all the more judicious in that, with the wines of extreme quality presented in this work, it is not the habitual drinkers of the product who will be affected by the borrowing of a prestigious name they know to designate run-of-the-mill wine. Indeed, the loss of earnings resulting from the borrowing will essentially target the potential clientele that has not yet been won over to the wine in question. The notion of dilution thus makes it possible to understand that a competitive relationship – fair, and above all unfair – can arise between players operating at different qualitative levels of the market concerned. It is therefore not because the pirated wine is a grand cru classé and the parasite a table wine that there can be no risk of confusion between them.

          The mere presence of a namesake of the former in a less fashionable wine area will indeed lead the consumer to believe that the former has swarmed there, bringing its know-how with it. The Court of First Instance of the European Communities (CFI 8 December 2005, Case T-29-04) thus stated at points 52 and 53 of that judgment that it was perfectly possible for the average consumer to confuse the celebrated Cristal of the house of Louis Roederer with a modest Catalan “cava” because of the borrowing of its name (Cristal Castellblanch, in this case): the public could indeed then believe that the great Champagne house had opened a branch in Catalonia.

          Of course, we have seen the highest courts of the country (e.g. Cass. com. 6 March 2007, La Mondotte, PIBD 2007 No 851.III.299) assert that the wine consumer was endowed with a specific perception, being supposedly accustomed to the respective origins and names of the growths. However, this idyllic and sublimated view has been condemned by the Court of First Instance of the European Union (CFI 21 September 2010, Villa Almè Azienda Vitivinicola du Vizzotto Giuseppe v OHIM, Case T-546/08, points 38 and 39), and by the Court of Cassation (Cass. com. 6 September 2016, Beychevelle, No 14-25692). And, moreover, in connection with the application of the fraud law, a criminal court has never been seen to acquit a dishonest winegrower or merchant on the pretext that his victims were endowed with an exceptional perception of the adulterated product…, which gives us the opportunity to tell readers that we shall say nothing of the criminal litigation that regularly arises over estates with multiple châteaux inspired by Cadet-Rousselle, or over second commercial marks covering an honest, humble négoce wine by tacking the name of a generic appellation onto that of a reputed estate. It is indeed immaterial to criminal prosecution whether or not the name challenged by the DREETS is filed as a mark.

          We shall therefore confine ourselves here to purely private disputes, in which the danger of free-riding giving rise to dilution lies in the suggestion, by a mere verbal kinship, of a common origin that misleads the public, the plagiarised product taking on the mediocrity that most often characterises the one that tows in its wake. This mechanism is of all periods, since nearly a century ago the Dijon court (CA Dijon 26 February 1923, S. 1923.2.101) stated lucidly, in respect of a neighbour of the Romanée-Conti wishing to enrich the attractions of his label by taking advantage of the vagaries of the land register, that “this addition to the name of the true origin of the wine… appearing to attribute to both a common origin and, at the very least, an oenological affinity deriving from their places of production, is liable to give rise to easy confusion for the great majority of wine lovers, who buy, pay and often even appreciate only on the strength of the label”.

          Quite naturally, and just four years before Schechter published his seminal article on the theory of dilution in the columns of the Harvard Law Review (“The rational basis of trademark protection“, Harv. L. Rev. 1927, p. 813 et seq.), this same Romanée-Conti judgment drew the conclusion “that such confusion, not only possible but generally inevitable, which would facilitate the sale on the market of wines of inferior quality and in greater quantity, would be liable to seriously compromise the reputation and market value of wines of repute produced in limited quantity by the sole growth of Romanée-Conti”.

 

 

 17- See Dominique Brandt, La protection élargie de la marque de haute renommée, thesis Geneva Droz, esp. pp. 138 and 139.

          To prevent or penalise damaging attacks on wine names, ordinary law of course offers means, but they are limited. Having recourse to the aforementioned law of 28 July 1824 (Art. L. 413-4 Consumer Code) or to the protection of growth names by civil law is indeed conceivable today and constitutes a strict minimum of protection that is thus assured to all wine names in the first case and to estate names alone in the second, without any formality being necessary^[18]. However, these legal avenues are by nature confined to the Hexagon and can therefore afford only territorial protection bounded by our borders. By contrast, since the end of the 19^th century, trade mark protection has become international in response to the globalisation of trade. There was first the system of international marks organised by the Madrid Agreement of 14 April 1891 in the wake of the PUC of 1883; there was then the European harmonisation of trade mark law following Directive (EC) No 89/104 of 21 December 1988, now replaced by Directive (EU) No 2015/2436 of the Parliament and of the Council of 16 December 2015; there was also the Madrid Protocol of 27 June 1989, making it possible to extend the international protection of marks to States foreign to the Madrid Agreement (e.g. the United States); and finally, starting from Regulation (EC) No 40/94 of 20 December 1993 – now replaced by Regulation (EU) No 2017/1001 of the Parliament and of the Council of 14 June 2017 – there was the creation of the Community trade mark, now called the “European Union trade mark”, which protects this type of sign within the Member States of the European Union.

          In the meantime there had been the Marrakesh Agreement of 15 April 1994 (TRIPS) establishing the World Trade Organization (WTO), Arts 15 to 21 of which relate to trade marks and Arts 22 to 24 to geographical indications. In its wake, the Doha conference had drawn up the Anti-Counterfeiting Trade Agreement, whose legal force is doubtful.

          The common point of the various aspects of the system is that the benefit of these schematically outlined provisions necessarily requires the sign one wishes to protect to be filed as a mark. Already in domestic law, a growth name or a simple commercial name will be far better protected by filing a trade mark than by the provisions of ordinary law alone: without filing, an infringement action, opposition to registration, seizure and description (saisie-description) or customs detention are strictly impossible. Moreover, unlike press law, where the applicability of the law of 29 July 1881 excludes recourse to ordinary liability law, intellectual property law readily admits the cumulation of rights, so that once filed, the mark is added to the other protections, such as those deriving from the 1824 law and the regime of growth names. There is therefore, on the French plane alone, an imperative reason to file one’s wine mark. If, in addition, the wine producer or distributor has designs abroad, filing is all the more necessary, since by going through a good professional it is perfectly possible to organise national and international protection of a wine mark in the best possible way.

          Each filing will be managed by a different body: the French filing by the Institut National de la Propriété Industrielle (INPI)^[19]; the Community filing by the European Union Intellectual Property Office (EUIPO)^[20]; and the international filing by the World Intellectual Property Organization (WIPO)^[21].

          Before each of these last two bodies, French is a working language but, while it is possible to file a Community trade mark directly with the EUIPO, an international filing imperatively requires a basic French filing (or one from another country) and each of the extensions will correspond to the acquisition of a particular national mark falling solely under the host country.

          The holder may perfectly well make the various national and Community filings personally by electronic means^[22].

          It is moreover important to note at this stage that, owing to the Cassevert case law (Cass. com. 18 January 1955, Grands arrêts No 12) mentioned above, an estate mark can be validly filed only by the owner of the land, whereas a commercial mark can be filed by anyone. In its Château des Barrigards judgment (Cass. com. 30 May 2007, Grands arrêts No 12 and the references), the Court of Cassation specified “that a sign designating a wine under the name of an estate may be filed as a mark only by a person guaranteeing the harvest and vinification at that place”. Because it is not its role, the INPI carries out no verification and issues no warning here, but it would be unfortunate if, as the operator, the tenant farmer believed himself authorised to file the estate mark when it is for the landlord to do so: it would be virtually void because it would then be legally detached from the estate. It would in fact take only the liquidation of the tenant for this legal detachment to rebound into a material separation, since the land would revert to the landlord and the estate mark to the creditors of his tenant.

          Let us further indicate, in order almost to finish with these purely practical points, that the sign filed as a mark may be the name of the estate or of the product (= word mark or nominative mark) as well as the label (= semi-figurative mark). A priori, it is hard to see how a purely figurative mark could individualise a wine. Thus, the Court of First Instance of the European Communities (CFI 12 September 2007, Cain Cellars Inc., Case T-304/05) held at point 26 of its judgment that “the wine consumer in the Community does not usually identify the commercial origin of wine by means of a basic geometric figure such as the pentagon”.

          Sticking to word marks and semi-figurative marks, it is the name of the wine that will be protected exclusively by the former and essentially by the latter, since the consumer recognises “the wine by the word element that serves to identify it”^[23]. There is an interesting difference here between wine marks and ordinary marks, where it is on the contrary accepted that figurative elements must be taken into consideration (e.g. ECJ 20 September 2007, Nestlé v OHIM, Case C – 193/06 P). However, the accessory elements of the label, such as its colour, may be protected by parasitic competition law even though their ownership has been established by the mark^[24], which demonstrates all the more strongly the value of cumulating rights.

 

 

 

18- Same regime as the trade name (see G. Loiseau, Rép. com., entry “Nom commercial”) or marks before the law of 31 December 1964 which made filing and registration compulsory.
19- 15, rue des Minimes, CS 50001, 92677 Courbevoie Cedex, France, tel. +33 (0)1 56 65 89 98.
20- Avenida de Europa, 4, E-03008 Alicante, Spain; tel. Information Centre: +34 965 139 100.
21- 34, chemin des Colombettes, 1211 Geneva 20, Switzerland – tel 41-22 338 9111, mail: wipo.mail@wipo.int.
22- French national filing: €190 for an electronic filing, €40 per additional class; EUIPO filing €850 for an electronic filing and €1,000 for a paper-form filing; allow €50 for the 2^nd class and €150 per additional class from the 3^rd.
23- CFI 13 July 2005, Juliàn Murúa Entrena v OHIM, Case T-40/03, point 56; CFI 12 March 2008, Sebirán SL v OHIM, Case T-332/04, point 38; and CFI 21 September 2010, Villa Almè Azienda Vitivinicola Vizzotto Giuseppe v OHIM, Case T-546/08, already cited, points 56 and 57 this time.
24- See CA Paris Pôle 5 Ch. 2 18 January 2013, Ducru-Beaucaillou, RG No 11/20286, appeal declared inadmissible by Cass. com. 8 April 2014, appeal No U-13-14582.

           Since it will finally have been understood that, alongside the principle of speciality touched upon in note 22, trade mark law obeys a principle of territoriality which is tempered only by the derogatory regime of the well-known mark within the meaning of Art. 6bis PUC, a recent difficulty should be pointed out, arising from the specific statuses that politics has arranged for our distant overseas possessions.

          Indeed, Organic Law No 2004-192 of 27 February 2004 establishing the autonomy statute of French Polynesia transferred to that territory numerous powers, including that of industrial property law. As a result, while a French mark filed with the INPI before 3 March 2004 and still in force is recognised there automatically and without formalities, an extension, which could be made until 1^st September 2023, had to be requested for marks filed or renewed between 3 March 2004 and 31 January 2014. More concretely, since 1^st February 2014, new French filings – not Community filings – have effect in French Polynesia only on payment to the INPI of an extension fee of €60. As for New Caledonia, powers in the matter of industrial property rights were transferred to the territory on 1^st July 2013 but, in 2023, we are still awaiting the decisions of the competent authorities, which means that to date a French mark has full effect there. One may nevertheless expect a regime comparable to that of Polynesia.

          It can already be seen that, while the holder of the mark may perfectly well deal with it himself, recourse to a professional is preferable. In accordance with Art. L. 422-4 IPC, this may be “an industrial property attorney, a lawyer or a company or public establishment to which the applicant is contractually bound or… a specialised professional organisation or a professional established in the territory of an EC Member State or a State party to the EEA Agreement acting on an occasional basis and entitled to represent persons before the central service of that State”. This enumeration is not very explicit, which is a pity, because the observation is inescapable in the wine field that, even more than commercial marks, estate marks are subject to very particular rules that call for indisputable know-how, and whose breach would deprive a national mark of useful effect, while also being able to rebound, under different conditions, on the Community or international extensions of which it has been the subject.

 

REGULARITY OF THE FILING

         It is indeed better to use the services of a professional, because the effectiveness of the mark necessarily presupposes the regularity of its filing. At the examination stage, the examiners of the INPI or the EUIPO can already point out certain obstacles to registration. Before WIPO, it is each of the States in which extension is sought that may raise objections or reservations. From this last point of view, moreover, during the first five years the validity of the international mark depends on the national basic filing.

          Now, whereas commercial marks come under, besides classic trade mark law, only the labelling rules that are unified at European Union level, estate marks obey fussy, purely French rules whose interpretation is uncertain. Three examples from the very recent past bear witness to these difficulties.

1. Before Decree No 2012-655 of 4 May 2012, which repealed and replaced (for wines only, as already said) Art. 13 para. 4 of the decree of 19 August 1921, that text stated that “the word ‘haut’ may be used only if it forms part of the name of an appellation of origin containing that word”. Thus, apart from the Haut-Médoc, Haut-Poitou, Haut-Benauge or Haut-Montravel AOCs, use of this term was formally prohibited, even though it flourished, with obvious success, in the Bordeaux vineyard as elsewhere. This was obviously absurd, but the ponderousness of “legislative drafting” meant waiting for that decree for the law to be brought into line with the facts.
2. In the wake of a dispute again concerning the Romanée-Conti, a number of authors had deduced from a judgment of the Paris court (CA Paris 28 November 1985, D.1987, somm. p. 56, obs. J.-J. Burst, Annales 1986.79; RIPIA 1986.133) an absolute incompatibility between the AOC and the mark, which amounted to systematically giving precedence to the former over the latter, however much earlier the latter was than the former. The absurdity of this solution (e.g. Château Margaux) was obvious and, moreover, in dismissing the appeal the Court of Cassation (Cass. com. 1^st December 1987, No 86-11328, Bull. civ. IV No 356; JCP 1988.II.21081; JCP E 1988.II.15417, note É. Agostini) did not take up this hazardous assertion, so that today, in accordance with Art. L. 711-3 1 5° IPC, it is only an appellation delimited BEFORE the homonymous mark that will prevent the registration of the latter.
3. Requiring the estate to demonstrate cultivation autonomy, labelling law rules out that, save for established exceptions^[25], it may bear two different château names. The Bordeaux court^[26] had deduced from this that a start-up of the time, largely vindicated today, could not validly have TWO quasi-identical MARKS to designate its wine. There was a manifest excess of legal verbalism here, because this text deriving from the 1921 decree merely ruled out a wine bearing two different estate names, which is not at all the same thing. The court fortunately came to its senses with its Château Figeac judgment (CA Bordeaux 1^st Ch. B 30 November 2012, RG No 09/06560), of which we shall speak again and in which it very rightly stated that labelling law “prohibits only the cumulative use of two different château names to designate a wine from the same estate, without prohibiting the filing of two marks for the same product” (in this case, the marks Château-Figeac and Château de Figeac).

         Even before these fevers of legal excitement, happily now subsided, the Paris court (CA Paris 27 November 1980, JCP G 1982.II.13821, note R. Plaisant; D.1982.314, note Denis) had ruled out that a table wine, as it was then called, could bear the name of a wine-growing commune, in this case that of the commune of Virecourt, in Meurthe-et-Moselle, where there would be a few rows of vines.

 

 

25- = merger of estates or reputation acquired since 7 January 1983 under Arts 8 and 9 of Decree No 2012-655 of 4 May 2012.
26- CA Bordeaux 30 August 2004, Château Valandraud, and already in summary proceedings, Libourne regional court, 15 November 2001, D. 2002.2183, note S. Chaillé de Néré.

          Today, this case law is resurfacing with regard to all wines, because Art. 5 of Decree No 2012-655 gave the fraud-control administration (today the DREETS) the occasion to adopt as its own an error of interpretation by the INPI that had formerly been corrected by the ECJ. Starting indeed from the list given by Regulation (EEC) No 355/79 of 5 February 1979 of the place names capable of constituting a smaller or larger geographical unit (see supra note 16), the Institute had considered that each of these should automatically be regarded as such. Yet the Luxembourg Court (ECJ 24 October 2002, Borie-Manoux, Case C-81-01) had condemned this interpretation because “it must be noted that, in both cases (= smaller or larger geographical unit), the use of such names must be explicitly provided for by the Member States”. Totally ignoring this judgment, the DREETS systematically vetoes the use of any word referred to in Art. 55-3 of Delegated Regulation (EU) 2019/33 where the specifications of the PDO or PGI concerned do not expressly authorise it.

          When seised of this question, the administrative courts refuse, no less systematically, to refer to the CJEU the preliminary question that would dispel all uncertainty (e.g. CAA Bordeaux, 16 July 2021, Conseil des grands crus classés de 1855 and others, No 20BX02993 – final judgment for lack of appeal) WHEREAS, when seised of a question similar in every respect, the specialised courts of the judicial order (e.g. CA Aix-en-Provence, 3 February 2022, Saint-Tropez, No 21-06061) – but not the criminal courts (e.g. CA Bordeaux 6^th Ch 30 June 2022, Le Bordeaux de Maucaillou, No 20-00157) – adhere to the guidance of the CJEU. Yet this question is crucial, because the coherence of wine law and respect for the rule of law are at stake.

          Although it is surprising to see a mere administration such as the DREETS allow itself to ignore with impunity the case law of the Luxembourg Court, this problem is not the only one to disturb the coherence of wine trade mark law. Indeed, one of the most questionable pending issues is that of the filing arrangements that the incorporation of one of the 17 regulated terms of Art. 7 of the labelling decree No 2012-655 into an estate mark requires – or does not require.

          The problem stems from the fact that the regulation of prestigious terms constitutes a set of specifications bearing directly on the validity of the marks that incorporate them. Now, although one may come across “bare” estate marks (e.g. La Tâche, La Romanée, La Mouline, La Turque, La Doriane, Petrus…), it is most often the addition of one of these localising and ennobling terms that characterises them. Hence the mere presence in the wine mark of a talismanic word will irrebuttably indicate to the consumer that the product offered to him is not some vulgar fungible commodity of more or less assured quality, but on the contrary a specific, identified item of indisputable nobility.

          Consequently, it would be doubly deceptive – that is, misleading – to file a mark of this kind to designate just any wine. On the one hand, this would extend it beyond its land base and detach it from the vineyard support to which the Cassevert case law ties it in perpetuity (Cass. com. 18 January 1955, Grands arrêts No 12, cit. supra). On the other hand, it would deceive the consumer to offer him “wine in general”, or even PDO or PGI wine, without any estate specification, when all that can be offered to him is PDO W wine or possibly PGI X wine from the estate exactly named Château Y or Domaine Z.

          This is the lesson to be drawn from the Romanée-Conti judgment of 1^st December 1987 cited above. Having taken action against an infringer without taking the elementary precaution of checking the regularity of its own marks, the société civile du Domaine de la Romanée-Conti had given its opponent the opportunity for a fine riposte. It accused him of infringing two marks, each of which reproduced this prestigious name, which is also the name of an AOC delimited in 1936, and the second of which also incorporated the word “Domaine” which, before 2012, could designate, like the term “château”, only a wine benefiting from an appellation of origin and coming from the estate so exactly named. Yet each of the two marks designated “wines and spirits” in general, without further specification, and the infringer found it easy to counter them with:

1. the undue incorporation of an AOC name to designate wine in general;
2. the irregular use of a word implying an estate in a mark that could cover anything provided it was alcoholic. These marks were thus intrinsically deceptive^[27].

          Whereas the Paris court had granted the counterclaim by insisting mainly on the incompatibility of the AOC and the mark, as we saw above, the Court of Cassation based its dismissal essentially on the deceptiveness of the designation of the product. This is so true that, when one of the two annulled marks came up for renewal – in this case mark No 1 863 606 – it could be regularised by us in accordance with the requirements of the 1921 decree, because at that time annulment decisions did not have the erga omnes effect that Art. L. 716-2-2 IPC now recognises for them. Consequently, in the eyes of the INPI, this mark was still valid despite the annulment. Then the Court of Cassation (Cass. com. 17 July 2001, No 9819923) had quashed a judgment of the Bordeaux court that had refused to annul the marks of Château Latour, which were just as broadly – hence just as badly – filed as those of the illustrious Burgundian. That court of appeal had mistakenly put forward the reputation of these marks as a reason for refusing to annul them, whereas Art. 6 bis PUC, which we have already encountered, makes the reputation of a mark merely a palliative for the absence of filing and not a remedy for any irregularity it may present.

          At that time, then, an estate mark had to designate imperatively a “wine of AOC X from the estate exactly named Château Y or Domaine Z”. Moreover, in the past, INPI examiners generally required applicants to comply with the requirements of Art. 13 para. 4 of the 1921 decree, now replaced by the more or less identical requirements of Art. 7 of Decree No 2012-655 of 4 May 2012. However, on the occasion of the transposition of Directive (EC) No 89/104 of 21 December 1988 by Law No 91-7 of 4 January 1991, the Institute decided to abandon this requirement on the pretext that it had no practical possibility of verifying the sincerity of the forms completed by applicants^[28]. One may then wonder why it now requires, only of applications to register estate marks, that the applicant specify that the wine they designate benefits from an appellation of origin, when it is hard to see how the Institute would today be any better placed to verify its accuracy. Evidently something had happened to make the INPI go from justified rigour, after a few years of unjustified libertarian wandering, to the sudden discovery of a curious requirement deriving from the old law of 6 May 1919 (= Art. 10 para. 5, which became Art. L. 644-2 Rural Code), hitherto ignored.

   

27- See J.-M. Bahans and M. Menjucq, Droit de la vigne et du vin, Nos 593 to 595, pp. 276 and 278.
28- See Christine Zanella, Les marques nominatives, thesis Litec IRPI 1996, No 198, p. 127. 

           Let us note in passing that there would have been no problem had the Institute confined itself to the requirement that the EUIPO was later to impose, namely that if the applicant wants his estate mark registered in Alicante, he is required to specify in the designation of the product that it is a wine complying with the conditions of use of the traditional term “château” deriving from the specifications. We must therefore try to understand why this sinusoidal evolution took shape.

          It is precisely because, immediately after the Château Latour judgment of 2001, there occurred what the best legal scholarship^[29] called “an unexpected reversal: the Haut-Brion judgment“. In that case^[30], the Bordeaux court^[31] had meted out to the marks of the flagship of Pessac-Léognan the fate that those of the Romanée-Conti had previously met. Indeed, under the 1921 decree, they were about as badly filed as the latter, with, in addition, a specific grievance relating to the incorporation of the word “Haut”, which was used to designate something other than an “appellation of origin containing that word” and which therefore at the time incurred the wrath of Art. 13 para. 4 (now repealed for wines, as we said above).

          Let us point out here that the counterclaim of the alleged infringer had been accepted by the court of appeal because, instead of designating Pessac-Léognan AOC wines from the estate so exactly named, the marks of the so-called victim of the borrowing covered “red and white wines”, which excluded only rosés from the designation. It was on this precise point that the judgment was quashed, on the ground “that no legal or regulatory text, national or Community, requires the origin of the wine to be specified in the mark”. Obviously, this quashing was more than surprising, for the sole reason, once again, that Art. 13 para. 4 of the 1921 decree imposed at one and the same time the benefit of an appellation of origin and the cultivation autonomy implying the origin of the wine. It therefore made all the more noise; and that is what led the INPI to confirm its forgetting of this text while very quickly unearthing Art. L. 644-2 Rural Code, which it had never applied to wine marks until then.

          At the moment, indeed, when the Château des Barrigards judgment already cited^[32] brought about on this ground the “return to orthodoxy”^[33], the Institute had, as has just been said, already considered that the regularity of an estate mark implied only that the applicant state the benefit of a PDO (PGI), since Art. L. 644-2 Rural Code made the use of the 9 terms mentioned in note 12 subject to that precise condition, and it took no account of the reversal. Curiously, then, in the eyes of the INPI it is Art. L. 644-2 Rural Code that must prevail over all others, whereas immediately after the Haut-Brion judgment (Cass. com. 11 March 2003) which had made it discover the article, the criminal chamber^[34] was to approve the criminal division of the Bordeaux court^[35] which had refused to take it into account in order to punish an alleged breach of Art. 13 para. 4 of the 1921 decree, the non-existence of which this same Haut-Brion judgment had just proclaimed…!

         True, as we have already seen, since Ordinance No 2010-459 of 6 May 2010, Art. L. 644-2 has been repealed “from the entry into force of the decree reproducing the provisions in the regulatory part of the Rural Code (indeterminate date)”, but this matters little because it has merely been demoted to the rank of regulatory provisions and thus retains full binding force.

          One then puts one’s finger on the incoherence and lack of preparation that presided over the very design of the texts governing the labelling of wines^[36]. It is indeed extravagant that sometimes (= Rural Code) certain terms require only the AOC, today the PDO, and that sometimes (= labelling decree) cultivation autonomy of the estate of origin must be added, which Art. 6 of Decree No 2012- 655 tells us, moreover, may be the work of a cooperative as well as of an independent winegrower. To sidestep the debate and dispose of this insoluble conflict, which equally justifies the position of the INPI (= pre-eminence of the Rural Code) and the one proposed here (= pre-eminence of the labelling decree), one could invoke the independence of the mark and the product which, with Art. 7 PUC, would send everyone away back to back by removing any requirement whatsoever in the wording of the filing of estate marks. However, as we said at the end of the introduction, this principle means only that the validity of the mark is independent of that of the product and in no way implies that the identity of the service or product covered cannot influence the mark. Otherwise, indeed, there could never be any deceptiveness, since this necessarily presupposes a gap between the wording of the mark and its object, which shows that, despite Art. 7 PUC, they are not independent.

          Consequently, a choice must be made, and one cannot do otherwise than recognise the soundness of the solution with the greatest legal legitimacy. Now here, the Rural Code can only bow to the authority of a European regulation, since it is the latter that today inspires the law on wine labelling. In theory, therefore, there is no conflict, but practice does not follow. As things stand, one indeed finds a complete gap between the texts and their day-to-day administrative application. On the one hand, with Annex VI to Delegated Regulation (EU) 2019/33, Art. 7 of the decree of 4 May 2012 makes the regularity of the use of the terms characterising the estate mark subject to the dual condition of the PDO (PGI) and cultivation autonomy, which rules out such a mark covering just any wine. But on the other hand, fuelled by the increasingly frequent use of electronic filings that escape genuine specialists, practice files any which way and is merely reminded by the Institute of the need to state the PDO (or PGI). This is regrettable because, quite apart from the fact that Art. L. 644-2 Rural Code has lost its legislative force, it is directly contradicted by European law, which prevails over any domestic provision. Consequently, any mark filed incorporating a regulated term must comply with the relevant specifications by stating the PDO (PGI) and cultivation autonomy. It is a matter of the most elementary prudence here to comply with these drafting constraints because, as we have already said, there is nothing more unpleasant for a mark holder – and humiliating for his counsel – than to be met, in the course of proceedings, with the invalidity of the sign that he claims to assert against an infringer.

          But then one is shut in a seemingly inextricable vicious circle: either the estate mark is filed in too general a manner and is deceptive; or it is filed correctly with the dual restriction relating to origin and quality and it is necessary. To say indeed that the mark Château Y designates a PDO Z wine coming precisely from that estate named Château Y is effectively to designate the product in a way that excludes the distinctiveness of the mark, since it merges purely and simply with the product it designates, which puts it in breach of Art. L. 711-2 2° IPC. Conversely, if badly filed, the estate mark infringes Article L. 711-2 8° IPC since it is deceptive, and it is void with absolute nullity in both cases. However, European law rules out any contradiction here whatsoever. On the one hand, recital 19 of Commission Regulation (EC) No 607/2009 of 14 July 2009 (see also point 49 of Delegated Regulation EU 2019/33) endorses the earlier trade mark law and thus allows the name of a wine estate producing under a PDO or PGI to be filed as a mark. On the other hand, this name may incorporate a term listed in Annex VI only by satisfying the requirements of Article 54, which imposes cultivation autonomy alongside the quality of the product. Estate marks therefore cannot be criticised in France for complying with a requirement that European law imposes on them.

         As Mrs Caroline Le Goffic writes^[37]: “Not only is descriptiveness not a ground of invalidity for wine marks, but it is even necessary to their validity because of their function as a geographical indication of the product”. It is indeed by complying with these requirements that the wine mark will fully perform the function of guaranteeing the origin of the product, which is the essential purpose of any mark, in accordance with absolutely settled European case law^[38].

         

     

 

29– Jean-Marc Bahans and Michel Menjucq, Droit de la vigne et du vin, esp. No 594, p. 276.
30- Cass. com. 11 March 2003, No 00-22722; PIBD 2003.II.319; JCP E 2003 p. 950, note G. Escudier; and p. 1434 obs. N. Boesplug, P.  Greffe and D. Barthélémy; Propr. indust. 2003 comm. 79, note G. Escudier ; RD rur. 2004 No 230, p. 4, obs. D. Rochard.
31- CA Bordeaux 18 October 1999, PIBD 20000.III.346; RD rur. 2001.165 chron. A. de Brosses.
32- Cass. com. 30 May 2007, Grands arrêts No 12 and the references.
33- J.-M. Bahans and M. Menjucq, No 595, pp. 277 and 278.
34- Cass. crim. 4 May 2004, No 02-83889; D.2004.2851 note É. Agostini.
35- CA Bordeaux 20 May 2003, D. 2003.2004, note É. Agostini
36- See E. and H. Agostini, “Le vin et l’État de droit ou Le tri sélectif”, Jus Vini, 2022-2, p. 1 et seq.
37- La protection des indications d’origine, France, Union européenne, États-Unis, thesis Litec IRPI 2010, No 551, p. 308.
38- ECJ 22 June 1976, Terrapin v Terranova, Case C-19-75; 17 October 1990, Hag II, Case C-10/89; and CJEU 22 September 2011, Interflora, Case C-323/09, cit. supra.

         Let us say again, to conclude this first point, that we could have spared ourselves the foregoing considerations if the Institute had followed the drafting routes imposed by the EUIPO for EU marks. To require, as the EUIPO does, that the applicant for a mark incorporating the word “château” specify that it is “a wine complying with the conditions of use of the traditional term château laid down by the specifications” cuts short the whole discussion we have conducted above. But let us note, however, that this requirement in no way shows that the European office has understood the problem of estate marks any better than its French counterpart. Indeed, if the filing merely states “PDO Y wine from the estate exactly named Château Z”, Alicante will still require that “and complying with the conditions…” be added, which leaves one speechless since these are precisely the very conditions deriving from Article 54 and Annex VI to Delegated Regulation (EU) 2019/33 and from Art. 7 of the labelling decree No 2012-655 of 4 May 2012.

          And let us note, finally, that litigation over the validity of wine marks underwent a genuine procedural revolution in 2019, which has applied since 1^st April 2020. Until that date, the INPI only ever dealt with the opposition-to-registration procedures introduced by the first transposition resulting from Law No 91-7 of 4 January 1991 or (like the EUIPO) with challenges relating to the filing. Today, Art. L. 716-5 IPC gives it exclusive jurisdiction for all absolute grounds of invalidity arising from Art. L. 711-2 and for the relative grounds of invalidity established by paragraphs 1 to 5 and 9 and 10 of Art. L. 711-3 I IPC. The Institute also has jurisdiction to hear actions for revocation based on Arts L. 714-5 (non-use) and L. 714-6 (mark that has become irregular through the fault of its owner). In these two cases, only the courts of appeal listed in Art. D. 311-8 of the Code of Judicial Organisation^[39] may be seised of an appeal against decisions of the INPI; representation by a lawyer will be compulsory there, though it is not before the Institute. As for wine marks filed in Alicante, the grounds of invalidity and revocation, and the related procedures, are laid down in Arts 59 to 61 and 63 to 72 of Regulation (EU) No 2017/1001 of the European Parliament and of the Council of 14 June 2017. But above all, litigation over the validity of wine marks may still arise before the criminal court, most often at the initiative of the DREETS, to penalise a misleading commercial practice within the meaning of Art. L. 121-2 Consumer Code. In this last case, however, it is not trade mark litigation strictly speaking, because irregular use of the regulated terms may perfectly well occur outside any filing. The criminal court will, moreover, take no account of the existence of a filing, whereas one could perfectly well see in it the authorisation of the administrative authority provided for by Art. 122-4 of the Criminal Code. It is therefore ultimately by way of counterclaim that this litigation will frequently arise, in riposte to an action brought to defend the mark.

DEFENCE OF THE MARK

          Since infringement is both a civil offence and a criminal offence (Arts 716-9 et seq. IPC), it may be pursued, at the victim’s choice, before the civil court as well as before the criminal court. Since the transposition law No 91-7 of 4 January 1991, however, there has been a preventive administrative procedure of opposition to registration (Art. L. 72-4 IPC) that makes it possible to nip the problem in the bud. This procedure takes place before the INPI with the possibility of appeal to one of the 10 courts of appeal listed in note 39.

          Whether the holder of the wine mark is on the attack or the defence, his first concern must be to verify the perfect regularity of his own mark and of the opposing mark, as well as the continuity of the renewals or assignments to which they have been subject. Likewise, in this spirit, any sale of wine property should be accompanied by an audit of the corresponding marks. Such a check is elementary for a specialist, for the sole reason that, under Art. L. 714-7 IPC: “Any transfer or modification of the rights attached to a mark must, to be enforceable against third parties, be entered in the national register of marks”. It is still necessary, however, that it be the holder himself or an agent meeting the requirements of Arts R. 714-4 para. 4 and L. 422-4 IPC (= exclusively an industrial property attorney or a lawyer) who has carried out the publication in question. These purely formal requirements obviously apply in the case of Community (EUIPO) or international (WIPO) extension.

          These elementary foundations being laid, the management and administrative defence of a portfolio of marks – and therefore of wine marks – is conducted in the same way at national or Community level. There are of course differences, but they are matters of detail: the period for opposition to registration is 2 months for a national mark and 3 months for a Community mark; the fee to be paid to the INPI is €400, whereas the EUIPO requires €320. In each of these two cases a tightly circumscribed procedure will open in which the examiners will obstinately refuse to look at anything outside the opposing marks. Given that an appeal is possible before a specialised court for a national mark, or before the EUIPO Boards of Appeal for European Union marks, the debate will not stray beyond questions of trade marks alone; we shall even see an appeal court^[40] refuse to take the 1855 classification into consideration in assessing the reputation of a wine mark! As for international marks, the corresponding procedure will of course obey the rules of the foreign State concerned.

          Supposing that matters go to litigation, it should first be stated that the defence of an EU mark necessarily falls to the European Union trade mark court of the territorially competent country, that is, in France, the Paris judicial court. It should then be specified that, for national marks, Art. D-211-6-1 of the Code of Judicial Organisation reserves exclusive jurisdiction in matters of intellectual property rights and indications of origin to 10 judicial courts, including that of Bordeaux, which thus covers the territorial jurisdiction of the courts of Agen, Bordeaux, Limoges, Pau and Toulouse. On appeal, it is the Bordeaux court that will have jurisdiction. The other competent judicial courts are: Lille, Lyon, Marseille, Nanterre, Nancy, Paris, Rennes, Strasbourg and Fort-de-France. This allocated jurisdiction interferes with the exclusive jurisdiction of the INPI in matters of absolute or relative invalidity of which we have just spoken. Finally, it should be noted that in the event of an international dispute, the French courts are in principle without jurisdiction to rule on a foreign mark, but that it should theoretically be possible to envisage in France an order, backed by a periodic penalty payment, targeting an act abroad^[41].

          Of necessity, it is French litigation that will be discussed here, and as regards wine marks, this will be treated in the same way on the merits, whether it concerns a Community mark falling solely under the Paris court or a French mark falling under a specialised court. In either case, and without yet speaking of the relief routes to be considered in fine, two different types of reaction can be seen to the attacks that a wine mark may suffer. There is first a classic defence by an infringement action, which is however dependent on various hazards that generate uncertainty (p. 9); there is then a defence adapted to the stakes, which consists, with more guarantees but unfortunately fewer beneficiaries, in demonstrating the deceptiveness of the rival mark (p. 11).

 

39- = Aix-en-Provence, Bordeaux, Colmar, Douai, Fort-de-France, Lyon, Nancy, Paris, Rennes and Versailles.
40- E.g. CA Toulouse 27 February 2008, Rauzan-Gassies, PIBD 2008 No 876.III.378, proceedings predating the specialisation of the courts.
41- See Cass. 1^st civ. 10 November 2002, Brachot, JCP 2002.II.10201, concl. J. Sainte-Rose and note S. Chaillé de Néré; D.2003.797, note G. Khairallah; Rev. crit. DIP 2003.631, note H. Muir-Watt.

CLASSIC DEFENCE: INFRINGEMENT

          In the past, this classic route was a royal road, because the case law tended to consider that the mere insertion of the “essential, irreducible and sole protectable element”^[42] of the infringed mark into a complex mark constituted infringement by REPRODUCTION. In the terms of the former law, as today under Art. L. 713-2 para. 1^st IPC, this requires only proof of the borrowing whereas, for infringement by IMITATION, Art. L. 713-2 para. 2^nd requires that “a risk of confusion in the mind of the public may result”.

          It was Château Latour that inaugurated modern litigation at the end of the 1960s. Originally the property of Nicolas-Alexandre de Ségur, whom Louis XV called the “prince of vines”, this estate had remained until then in family joint ownership, with the management problems inherent in this absence of structure, and notably a culpable negligence towards competing marks. Fortunately, however, the 5-year time bar for acquiescence (Art. L. 716-4-5 IPC) did not yet exist and, when the estate was bought, its new owner relaunched on a large scale the purging crusade that the former owners had timidly sketched out as soon as the law of 23 June 1857 came into force. At that time, indeed, “Latour” or “La Tour” marks were proliferating, and it was to be feared that this profusion would cause in people’s minds a confusion comparable to what the erection of the Tower of Babel was for the language of men.

          Very wisely starting out by attacking false “Tours” whose cement was still fresh, Château Latour extended its procedural aggression to long-established adversaries and succeeded in making growths that had been called “Latour” for ages give way. The only justification for homonymy that it accepted at that time was one that could be deduced from the land register^[43]. And even then, it was often the courts that had to force it to do so^[44]. Yet with the judgment already cited of 17 July 2001 (No E 98-19923), it was finally realised that, being filed too broadly, the estate marks that it invoked against its adversaries were void, which did not prevent it from making a good number of rivals give way. In any case, it had set off a movement of immense scale, which was followed by the great and the small alike.

          There was thus at that time a tendency favourable to marks in general, and to great estate marks in particular, and it was tempered only by the operation of the theory of homonyms, which consists in recognising the rights of the legitimate holder of a surname (e.g. Ségur) or a place name (e.g. Latour), while requiring him to add a distinctive sign preventing any confusion with the earlier opposing mark. One of the first judgments to have accepted this^[45] concerned a case of estate homonymy where the claiming property had formerly belonged to the growth in question. Already, in an even older judgment^[46], the Supreme Court had held “that the owners of a reputed growth alone, but also all of them, have the right to mark the vessels containing their wine with a stamp recalling that growth”. Then, from this estate homonymy, the courts moved on to verbal homonymy, relying solely on land-register parcels, in which was then seen the generating fact of a toponymic right^[47].

          Without discussing the theory of homonyms on the ground of the basis for recognising the right to a name, it could then be said with the bâtonnier Siré^[48] that “the mark which has lawfully, but belatedly, incorporated the same name is required to add a prefix or a suffix”. In fact, unless one considers the land register to be a perfect intruder in the play of the right to a name, consideration of it was called for on the ground of the law as a whole, because with infringement the victim sets against his adversary a monopoly of use arising from pure private law. Consequently, if the defendant, for his part, can justify his conduct by a legal argument of equivalent weight such as the right to a name, it would be inadmissible to expropriate him of it on the ground that the claimant invested before him a relatively modest trade mark fee. The argument, however, does not hold for every homonymy. Indeed, names taken as distinctive signs do not have the same legal nature and belong to two different worlds: 1/ surnames come under the status of persons and are totally foreign to the world of commerce, unless they are precisely transformed into marks; but as long as they have not been, they are not covered by the right of property and, without approving of it, it is perfectly understandable that the legislator was able to put an end to surname homonymy in the field of marks (Art. L. 713-6 IPC). 2/ As place names, on the other hand, the names of growths belong to the world of property and constitute an intangible element of the vineyard holding they designate. They are consequently covered by the right of property and are thus sheltered from any expropriation for reasons of private utility. It is therefore perfectly understandable that, despite Art. L. 713-6 IPC which we have just discussed, the case law continues to apply the theory of homonyms to them^[49]. True, the judgment cited in note 49 was quashed for breach of the authority of res judicata and thus had no damaging consequence for Petrus, but the principle that it accepted retains all its force because the Court of Cassation had already endorsed it, as we shall see immediately.

          Consequently, it can be said with Mrs Christine Zanella^[50] that “the operator’s right to the name of a terroir results from ownership of a sufficient area of land registered under that name”. Not only, indeed, had that court, in the Petrus Gaïa judgment just cited, held that 60% of parcels registered under the name of Petrus established a right to the name, but in addition the Court of Cassation^[51] had already approved the principle of its approach in a Beauregard case where 20% of parcels so registered had been held insufficient. Likewise, the commercial chamber^[52] quashed a judgment of the Paris court for failing to examine the complaint made against a Château Le Cluzeau of having no serious toponymic basis. Certain judgments do however bring an interesting nuance to the arithmetical automaticity of the land-register reference. Thus, Professors Bahans and Menjucq^[53] cite the La Tour de Ségur case, where the Bordeaux court (3 December 2001) had admitted homonymy despite a low proportion of parcels registered as “La Tour”, considering that the property had been so called for centuries and that “the deliberate intention to acquire parcels registered as Latour in order to benefit from that mark and place itself in the wake of a world-famous great growth was not demonstrated”. This judgment was upheld by the Court of Cassation.

 

42– E.g. CA Bordeaux 22 October 1984, La Tour Castillon, Cah. jurispr. Aquitaine 1985.1.179, note Touzet; 27 June 1985, La Tour Haut-Caussan, ibid. 1985-3, p. 580, note J. Derruppé, upheld by Cass. com. 3 March 1987, No 85-16765, D.1988.87, note Diener.
43– See Éric Agostini, “Cadastre et nom de cru”, Vin, Droit & Santé 2018, pp. 141 to 178, esp. pp. 147 to 155.
44- E.g. CA Bordeaux 25 April 1988, Latour-Laguens, D.1988.509, note É. Agostini.
45- Cass. Req. 18 May 1892, Larrivet-Haut-Brion, DP1893.1.434.
46- Cass. Req. 6 June 1847, La Cardonne, S.1847.1.521, already cited in connection with the 1824 law.
47- = CA Bordeaux 9 May 1010, Cheval Blanc, J. des arrêts de Bordeaux 1910.2.265; Cass. com. 4 November 1964, Saint-Georges, Bull. civ. III No 480; Cass. com. 8 May 1973, La Brède d’Hautussac, Bull. civ. IV No 168.
48- “Les châteaux de Bordeaux”, cit. supra JCP 1972.I.2472, esp. No 13.
49- E.g. CA Bordeaux 23 May 2005, No 04-00512, Petrus Gaïa, D.2005.2397, note É. Agostini.
50- Les marques nominatives, cited above, No 328, p. 210.
51- Cass. com. 18 December 1990, Bull. civ. IV No 333.
52- Cass. com. 11 March 2014, Ducluzeau, No V-12-10650.
53- Droit de la vigne et du vin, No 655, p. 309.
54- Cass. com. 3 March 2004, RD rur. 2004, No 324, p. 366, note D. Rochard.

         While warning the reader that there are very strong arguments in support of rejecting any reference to the land register (see “Cadastre et nom de cru”, cit. supra, note 43, pp. 162 to 178), the general trend must be followed, specifying however that so far the legitimacy of this administrative instrument to intervene in the matter has never been challenged by anyone, which has obviously made it easier to take into account since, after all, it was the land register that the Cassevert judgment already cited was speaking of (Cass. com. 1^st January 1955, Grands arrêts, No 12). In any event, and without going further, one is entitled to prefer estate homonymy to land-register homonymy, since it has never been seen that the name of the parcels makes the quality of the grapes^[55].

          As to the usual methods of assessing infringement, the classic defence of wine marks was overturned by a decision of the ECJ^[56], delivered in an entirely different field. The question was whether the mark Arthur & Félicie filed by the second party infringed, by reproduction or by imitation, the mark Arthur owned by the first. On a preliminary question referred by the Paris regional court, the ECJ held at point 54 of its judgment “that a sign is identical to the mark where it reproduces, without modification or addition, all the elements constituting the mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer”.

          One thus sees at once the total reversal compared with earlier practice, which saw a reproduction – and not a mere imitation – in the incorporation, within a complex mark, of the “essential, irreducible and sole protectable element” of the infringed mark, as was said above in citing the La Tour Castillon and La Tour Haut-Caussan^[57] judgments. On the contrary, one was referred back to the far less generous solutions that Château Latour obtained when it was obliged to play on its opponent’s ground^[58]. It was henceforth necessary to demonstrate possible confusion between the signs and between the products, as required by Art. L. 713-3 IPC in its wording at the time, without relying solely on the borrowing of the name Latour as with reproduction.

          The situation was therefore no longer the same and, although with the Cristal Castellblanch case law already mentioned above^[59] one could, very theoretically, take a favourable view of the comparison of the products, matters were not as simple with the comparison of the signs. At the risk of discouraging the filing of a wine mark – or at least its defence – it must indeed be pointed out that, under European law, which prevails on all questions relating to marks, the mere fact of adding a word to the one borrowed makes it possible to argue that a SYNTAGM has been created. This is a new word distorting the meaning of each of its constituent elements. True, well-established case law^[60] accepts the reality of this linguistic novation in principle only “if there is a perceptible gap between the neologism and the mere sum of the elements that make it up”. However, if we remember having come across above the judgment of the Court of Cassation concerning La Mondotte (Cass. com. 6 March 2007, PIBD 2007 No 851.III.299), we know that in the eyes of the Supreme Court the Bordeaux court was to be approved for having detected a syntagm in the mere addition of Bellisle to this name…

         It is therefore apparent that the judicial hazard is real. At the opposition-procedure stage it is aggravated by the fact: 1/ that the Institute considers itself not bound by its own precedents; 2/ that it does not agree to give consideration to elements external to the conflicting marks such as the 1855 classification and its equivalents; and 3/ that it obstinately refuses to see in the regulated terms anything other than banal terms “customary in the language of wine”, which would therefore in its eyes be devoid of any specific meaning. Despite these criticisms, however, it would be excessive to say that the balance is totally negative, whether at the preventive stage of the opposition procedure or at the final stage of the contentious procedure. Indeed, a number of decisions give satisfaction, even if there is a loser each time!

          To summarise the trends, we may cite the judgments in which, on referral after quashing, the Bordeaux court^[61] successively recalled:
(a) that the former time bar for acquiescence under Art. L. 714-3 IPC (now Art. L. 716-4-5) “which is understood as an implicit but voluntary act, performed in full knowledge of the facts, presupposes proof of actual knowledge of the contested mark on the part of the holder of the earlier mark”; 
(b) that “the risk of confusion is not removed by the addition of the name of the owner of the mark in dispute after the words ‘Cheval Blanc’. Indeed, this element of differentiation, intended to eliminate any confusion, is not sufficiently distinctive in relation to the two words that precede it, which constitute the reproduction of an illustrious earlier mark and alone fulfil the distinctive function of the mark alleged to be infringing, of which they constitute the essential element, such as to characterise it in the mind of the public”;
(c) that, lastly, “the risk of confusion is not attenuated by the difference relied upon… between a red wine and red and white wines of different appellations, which are not sold at the same prices” because “reasonably attentive and competent consumers, and even informed consumers, may be led to think that the use of the words ‘Cheval Blanc’ in the mark [of the defendant] means that the wine marketed under that sign is a second wine of the Société Cheval Blanc or that it [is] in some way connected with that company’s production”.

          There are obviously discordant notes in the harmony of the case law, both at the opposition stage and at that of judicial litigation proper, but in any event the filing of a French or Community mark is the condition without which an extra-European extension cannot be envisaged, unless the mark is registered directly in the country chosen.

          Consequently, it is imperative to file one’s wine mark. All the more so since, for its defence, new prospects have opened up over the last nearly 20 years.

 

55- See the note at D.2001.3266, under CA Bordeaux 5 July 2001, Tour Faugas, No 99/01422.
56- ECJ 20 March 2003, LTJ Diffusion v Sadas Vertbaudet, Case C-291/00.
57- CA Bordeaux 20 October 1984, Cah. jurispr. Aquitaine 1985.1.179, note Touzet; or 27 June 1985, ibid. 1985.3.580, note J. Derruppé, upheld by Com. 3 March 1987, D.1988.87, note Diener.
58- E.g. Cass. com. 27 May 1986, No 84-1463; JurisData No 1986-001015; D.1988.87, note Diener, already cited; or Cass. com. 6 February 1990, No 88-14654; JurisData No 1990- 000277; Bull. civ. IV No 37; D.1990.inf.rap. p. 52.
59- CFI 8 December 2005, Case T-29/04.
60- ECJ 20 September 2001, Procter & Gamble v OHIM, Case C-383- 1999 P, esp. point 40.
61- CA Bordeaux 1^st Ch. B 20 March 2012, No 10-02768, and CA Bordeaux 1st Ch. B, 30 November 2012, No 09/06560.

ADAPTED DEFENCE: DECEPTIVENESS

          The reader will search in vain for this word in ordinary dictionaries. It is a term specific to trade mark law, whose structure dictates its meaning: “déceptif” (deceptive) is what is liable to deceive, that is, to mislead. It is a defect affecting a mark from its filing (Art. L. 711-2 8° IPC) or through the fault of its owner (Art. L. 714-6 IPC). It is understandable for this reason that deceptiveness in the technical sense of the word can infect only a mark filed and registered with the INPI, and cannot affect a name that has not been appropriated as such, that is, a mere mark of use. In the latter case, the victim of the usurpation will have a neighbouring legal avenue consisting in accusing his unscrupulous colleague of a misleading commercial practice (Art. L. 121-2 Consumer Code)^[62]. With the latter, it is a criminal offence (= délit), which can of course also be pursued in the civil courts by way of a classic liability action subject to the conditions of ordinary law. In view of the obstacles that bristle in the way of the classic infringement action, the advantages of deceptiveness are obvious.

          As Mrs Zanella notes^[63] (Les marques nominatives, cit. supra, esp. No 317, p. 204), “in practice, the infringer almost never reproduces the famous mark identically, but is content to take over an element that he considers the most attractive”. As a result of the Arthur & Félicie^[64] judgment (ECJ 20 May 2003, Case C-291/00, cit. supra), the victim is then obliged to base the defence of his mark on imitation and will have to demonstrate the risk of confusion between the signs and between the products. He will also have to escape a possible 5-year time bar for acquiescence (Art. L. 716-4-5 IPC) and will further be exposed to the 5-year extinctive limitation period (Art. L. 716-4-2 IPC), although this period now runs “from the day on which the holder of a right knew or should have known the last fact enabling him to exercise it”. But above all, the victim of the infringement risks being met with a claim of homonymy, no longer of homonymy by surname, of course, since since the 1991 transposition Art. 713-6 IPC no longer opens that right, but of a homonymy by place name liable to lead to exactly the same result as an outright dismissal. Indeed, the alleged infringer would then be officially confirmed in the borrowing of which he is accused^[65], as was the case, for example, in the Latour-Laguens^[66] case (CA Bordeaux 25 April 1988, D.1988.509, note É. Agostini) mentioned above.

          Now, it is obvious that, without the complete eradication of the harm suffered, defending the mark would be of no interest to the victim, and would moreover constitute a premium for the infringer. Furthermore, a new market in wine-growing land would even emerge in which the value of the land would depend on the cadastral name alone; not to mention the manoeuvres of all kinds that can be imagined in emerging countries – or even “emerged” ones, like China – where the risk of dilution is commensurate with the hopes arising from the markets concerned. The defence must therefore be adapted to the stakes, which the latest case law of the Bordeaux court has been doing for some time, under the approving supervision and even with the decisive initiative of the Court of Cassation.

          In reproducing above one of the essential passages of the Romanée-Conti judgment of the Dijon court^[67] (CA Dijon, 26 February 1923, S.1923.2.101), we saw that the “oenological affinity” suggested by the borrowing of a reputed growth’s name was “liable to give rise to easy confusion for the great majority of wine lovers, who buy, pay and often even appreciate only on the strength of the label”. Now, to lead the consumer to be mistaken in this way about the origin of a wine is to “deceive the public, in particular as to the nature, quality or geographical origin of the product or service”, as stated in Art. L. 711-2 8° IPC. It is therefore to taint the usurped name with DECEPTIVENESS.

          The mechanism of deceptiveness fits all the better with the wish to combat parasitism in the wine trade in that, at the time the procedure was devised, an action for trade mark infringement was time-barred after 3 years, whereas the action for absolute invalidity on the ground of deceptiveness was time-barred after 30 years. It goes without saying that this advantage was considerably eroded by the reform of limitation periods resulting from Law No 2008-561 of 17 June 2008, which reduced the ordinary limitation period to five (5) years (Art. 2224 Civil Code). However, subsequent legislative developments have literally resurrected this superiority of deceptiveness over infringement, since the transposition ordinance No 2019-1169 of 13 November 2019 took over the rule of non-prescription (Art. L. 716-2-6 IPC) that Law No 2019-486 of 22 May 2019, known as the PACTE law, had moreover declared retroactive in its Article 124-III.

          The case law of the lower courts had moved very clearly towards applying to the Intellectual Property Code the retroactivity expressly provided for by the PACTE law^[68], which would ultimately have made it possible to challenge an infringing mark without any time limit, as was the case before the first transposition of 4 January 1991.

          However, the Bordeaux court has condemned this case law because – one may think – the transposition ordinance No 2019-1169 did not specifically take over for marks the general stipulation of retroactivity provided for by Art. 124-III of the PACTE law No 2019-486^[69]. It nevertheless remains that, for grounds of invalidity for which the limitation period had not run at the time the PACTE law of 22 May 2019 came into force (= 24 May 2019), non-prescription will apply in the terms of Art. 2222 Civil Code. It then remains to specify the nature of the quality falsely suggested by the challenged mark.

          Indeed, it would not be serious to invoke here just any imaginary nature, just any misleading quality or just any inaccurate provenance to launch an action for absolute invalidity based on the complaint of deceptiveness. It is imperative, in fact, that the appearance usurped by the defendant link the consumer to an official dignity. In other words, even if the psychological mechanism driving both is comparable, infringement and deceptiveness are absolutely not interchangeable, quite the contrary: unlike the former, which resolves only a conflict of PURELY PRIVATE INTERESTS, deceptiveness necessarily presupposes the assumption of a false quality PREJUDICIAL TO THE CONSUMER. It therefore implies that the referent evoked enjoys an official distinction whose lustre the usurper will borrow. This explains why, in wine matters, the former Art. L. 711-3 IPC (now Art. L. 711-2 8°) has so far operated only for the benefit of officially classified growths. The Saint-Émilion classification indeed gave it its first opportunities to intervene, and the 1855 classification – which has full legal value today – quite naturally followed. We know of no litigation on deceptiveness relating to the Graves or the Côtes de Provence. The crus artisans, likewise made official, are too recent to have been the subject of any. As for the crus bourgeois, apart from the challenge to the classification, it is only on the ground of protecting their name that they have distinguished themselves, unsuccessfully on one occasion (CA Bordeaux 9 April 1996) but victoriously thereafter^[70], despite the earlier annulment of their mark.

 

 

62- See Regional court Paris 3^rd Ch 25 September 2015, Manon La Lagune, No 13-18242.
63- (Les marques nominatives, cit. supra, esp. No 317, p. 204).
64- ECJ 20 May 2003, Case C-291/00, cit. supra.
65- See É. Agostini, “Les marques vinicoles sous le signe de la diversité”, Mélanges en l’honneur de Jerry Sainte-Rose, Bruylant 2012, pp. 61 to 105, esp. pp. 96 to 102.
66- CA Bordeaux 25 April 1988, D.1988.509, note É. Agostini.
67- CA Dijon, 26 February 1923, S.1923.2.101.
68- E.g. Bordeaux judicial court 23 November 2021, Pauillac No 18-06479.
69- CA Bordeaux, 25 October 2022, Château La Rose Bellevue, No 21-04291.
70- CA Paris 4 April 2003, RG No 2001/15900, case Hippopotamus.

          The case law that is about to be presented is relatively recent, admittedly, but it has deep roots, manifestations of which we have already encountered:

• Cass. com. 18 January 1955, Cassevert, Grands arrêts No 12;
• Cass. com. 30 May 1987, Chassagne-Montrachet, No 06-14783, Bull. civ. IV, No 146;
• Cass. com. 30 May 1987, Château des Barrigards, Grands arrêts, No 12.

          In these three cases, it was indisputably the deceptiveness of the mark in question^[71] that was at the heart of each of the judgments. Now, it is obvious that certain cases of infringement correspond to them point for point. Indeed, let a name instil in the consumer that a wine foreign to him is a satellite or a branch of a growth enjoying an official classification, and he will at the same time be misled as to the quality and the provenance of the product, in breach of Art. L. 711-2 8° IPC.

          At first, the Court of Cassation^[72] overcame the reluctance of the Bordeaux court, which had upheld the privilege of the parcel “despite the weakness of the percentage of land concerned” because it had “not found that the grapes from the plot derived from the former Domaine de Figeac were vinified separately”. In those circumstances, it could not “rule out the deceptive nature of this sign to designate the wines coming from that estate, its reference to the age of its use being immaterial and ineffective”.

          Bowing to this censure, the 1^st chamber B of the same Bordeaux court^[73] was to spell out the new solution by specifying, in its judgment already encountered above, that “contrary to what the [defendant] company claims, the deceptive nature of its marks does not arise from the fact that the plots of its estate are not registered as ‘Figeac’ in the land register but from the fact that, with the exception of those located at the locality known as ‘Petit-Figeac’, they do not come from the former Domaine de Figeac”. Shortly before and immediately after this important decision, the 1^st chamber A of the court was to penalise on four occasions the deceptiveness of suggesting without right a connection to Château Cheval Blanc.

• CA Bordeaux, 1^st Ch. A 6 September 2010, No 08.01814, appeal declared inadmissible by Cass. com. 3 November 2011, No R.10-26251
• CA Bordeaux 1^st Ch. A 3 January 2011, No 02994
• CA Bordeaux 1^st Ch. A 25 November 2013, No 12/03820
• CA Bordeaux 1^st Ch. A 2 December 2013, No 12/01511

          However, the court had in the meantime had to deal with a textbook case in which the opponent of Château Cheval Blanc demonstrated a cadastral density perfectly comparable (2/3) to that which had justified recognition of the rights of a homonym of Petrus^[74] (CA Bordeaux, 25 May 2005, D.2005.2397, note É. Agostini, cit. supra: here 60% of parcels so registered). Now, the first Bordeaux judgment initiating the penalising of deceptiveness^[75] (CA Bordeaux 6 September 2010, No 08-01814) had accused the then opponent of Château Cheval Blanc of having “manifestly attempted to place itself within the sphere of reputation of one of the greatest classified growths of Saint-Émilion and to usurp the qualities inherent in the latter without any credible toponymic right”. It was thus inevitable that the old theory of homonyms would be invoked as a qualification to the new applications of deceptiveness.

          In the case mentioned, this is precisely what our court of appeal had accepted^[76] in ruling out “the deceptive nature of the mark ‘Domaine du Cheval Blanc’ [on the ground] that the overall property of 17 ha included 11 ha 60 of plots designated in the land register under the place name ‘Cheval Blanc’, that is, two thirds”. Yet its judgment was quashed because it had not responded “to the submissions of the company Cheval Blanc maintaining that the mark ‘Domaine du Cheval Blanc’ was liable to mislead the consumer as to the quality and provenance of the wine designated under that mark by leading him to believe that it was a second wine of the premier grand cru classé A Cheval Blanc”^[77]. Likewise, just before^[78], the commercial chamber had also quashed another judgment, this time of the Paris court, which had accepted the possibility for the legitimate descendants of the founding father of Château Léoville-Poyferré to file the mark “Baron de Poyferré”, reproducing both their surname and their noble title. It had indeed considered “that, in so determining, without examining whether the mark ‘Baron de Poyferré’, also registered to designate wines, was not liable to mislead the public by leading it to believe in the existence of a link with the 2^nd grand cru classé wine of Saint-Julien produced under the name ‘Château Léoville-Poyferré’, the court of appeal deprived its decision of a legal basis”.

          Let us nevertheless point out that, without calling into question the principle asserted by these two judgments of the Court of Cassation, the courts to which the cases were referred have been reluctant to draw all the consequences from it. Nevertheless, the two judgments cited are of capital importance because, running counter to hitherto received ideas, they hold that, a priori, the existence of the right to a name does not absolve the complaint of deceptiveness. In both cases, in fact, the right to the name, cadastral or surname, was not disputed and its reality was even expressly admitted. Yet homonymy was expressly set aside by two quashing judgments, and that is obviously because, in both cases, the name used enjoyed the official honours of the Saint-Émilion classification for Cheval Blanc and of the 1855 classification for Léoville-Poyferré. Thus, as Mrs Zanella^[79] already stated, “the public’s right not to be the victim of confusion is an absolutely overriding general interest that prevails over a person’s right to his name”.

          Admittedly, as Professor Robert Plaisant very rightly observed^[80], “since the name of a growth is an element of the land holding, it is included in the right of property having the holding as its object”, but while knowing perfectly well that the right of property belongs, as the saying goes, to the constitutional block, the absolutism that Art. 544 Civil Code recognises in it carries a natural limit: “provided that no use is made of it that is prohibited by law or by regulations”. Now, deceptiveness necessarily limits the right of property, because the deceit that results from it constitutes a “use prohibited by law” and, more precisely here, by Art. L. 711-2 8° IPC.

        

71- For the Cassevert judgment, see also the analysis by Pierre Siré, “Les noms des vins de Bordeaux”, JCP 1959.1.1490.
72- Cass. com. 13 October 2009, Figeac, No 08-12270, D.2010.299, note Grimonprez; RD rur. 2010, comm. No 66, note C. Lebel.
73- CA Bordeaux 1^st Ch. B 30 November 2012, No 09/06560.
74- CA Bordeaux, 25 May 2005, D.2005.2397, note É. Agostini, cit. supra: here 60% of parcels so registered.
75- CA Bordeaux 6 September 2010, No 08-01814.
76- CA Bordeaux 1^st Ch. A, 10 September 2012, No 11/02140.
77- Cass. com. 7 January 2014, No C 12-28.041.
78- Cass. com. 13 November 2013, Château Léoville-Poyferré, No K12-26530.
79- Les marques nominatives, cit. supra No 357, p. 225.
80- Note at D.1961.426, esp. p. 430 under CA Bordeaux 23 May 1960, Saint-Georges.

          On the contrary, when ownership of the growth name does not compete with a public interest but merely comes into conflict with another private interest, there is no reason why the one who first filed it as a mark should prohibit the use of the second, because that would then amount to sanctioning an expropriation for reasons of private utility contrary to the elementary principles enshrined in Art. 17 of the Declaration of the Rights of Man and of the Citizen of 1789, in Art. 545 Civil Code and in Protocol No 1 to the European Convention for the Protection of Human Rights and Fundamental Freedoms. With deceptiveness, however, where the interest of consumers obliterates every other question, the only necessary limit to the monopoly conferred by an estate mark will be the long-standing belonging of the claimant’s plots to the property whose name he takes over. By the very fact of its origin, the potential homonym will indeed have irrefutably demonstrated that he is not a vulgar parasite but an honest table companion. This explains why the founding judgment of 13 October 2009 was able to fault the quashed judgment for not having “found that the grapes from the plot derived from the former Domaine de Figeac were vinified separately”. It thus took up the essential guidelines laid down by the ECJ in its Château de Calce^[81] judgment, and demonstrated thereby that, even supposing that the land register may have some effect, it is estate homonymy that matters here, and not the mere verbal homonymy that may flow from it.

          If one considers, moreover, that this same Figeac judgment had also set aside the “ineffective reference to the age of use”, one might think that deceptiveness has henceforth stolen the limelight from infringement in wine mark litigation. In fact, this is not entirely true, because the avenues of deceptiveness are open only to names enjoying official recognition. Outside the classifications, there is no salvation, because the infringement action leaves the door open to the invocation of homonymy, which is quite rightly set aside with deceptiveness. This is certainly what explains why, to achieve the same result, a growth of immense reputation, which had not benefited from the reopening of the 1855 classification by the Bordeaux Chamber of Commerce and Industry in 1969^[82], was led to risk the criminal adventure of joining proceedings as a civil party for misleading commercial practice^[83]. More peacefully, one can also think of drawing all the consequences from the fact that, because it takes over the name of a growth, the estate mark constitutes an intangible element of the rural holding and thus takes on the nature of a real right in immovable property. The action protecting it would then be a real action relating to immovable property confined within the 30-year period of Art. 2227 Civil Code, which may give rise to fruitful discussions.

          Let us spice up, to finish, this overview of wine marks by trying to gauge the impact of public health policy and of the Évin law. We have just seen that their holder has with them more or less effective weapons enabling him to defend a name against outside attacks by competing third parties. One might thus think him assured of total freedom of manoeuvre with regard to his own mark, subject to the obligation of use and the prohibition of deceptive use imposed by Art. L. 714-5 IPC. In fact, the Bordeaux court^[84] had incidentally recognised the owner of a wine mark as having the right to use it as he pleased. But that was precisely before Law No 91-31 of 10 January 1991, known as the Évin law. Now, applying Art. L. 3323-3 of the Public Health Code, which prohibits indirect advertising in favour of an alcoholic beverage, the Court of Cassation^[85] held that the filing in class 33 of a mark identical to one already used elsewhere created “an obstacle to the free use of the first mark” and thus justified an annulment outside the speciality of marks. In Professor Norbert Olszak’s striking phrase^[86], the alcoholic mark is thus irremediably accused of “polluting” the earlier mark, which entails its nullity.

          Now, one need only imagine that the owner of a wine mark uses it himself in other sectors in order to profit from its aura to agree that there will automatically thereby be indirect advertising in favour of the wine in question through the outside activities. It is all the easier to think of this since, until the 2019 transposition, the filing fee was increased only from the 4^th class of the Nice Agreement, whereas today the cost of filing begins to rise from the second. It is therefore extremely common to see wine marks covering 3 classes, thus opening the door to prosecution of this henchman of an alcoholic beverage in the name of the Évin law…

          Until now, the courts to which this question has been put have approached it in a biased way, starting from the principle that a mark can fulfil its advertising function only to the extent that its holder exploits it in that sense^[87]. In other words, there could be indirect advertising only if, through their use, the non-alcoholic mark or marks were actually advertising the alcoholic mark indirectly. It is easy to reply, however, that the question here is not whether the applicant is guilty of the offence of indirect advertising, but whether it is lawful to build up a framework of marks whose use would inevitably have that effect. Contrary to appearances, the question therefore remains open.

            Rest assured, however: there are very serious arguments in defence, but it would take too long to set them out here.

 

 

 

 

81- ECJ 29 June 1994, Case C-403/92.
82- See René Pijassou, Un grand vignoble de qualité : le Médoc, ed. Taillandier 1980, vol. 2, p. 1066.
83- Cass. crim. 12 June 2019, Petrus Lambertini, No P 18-83298 FD.
84- CA Bordeaux 26 February 1980, Château Latour, D.1980.535, note É. Agostini.
85- Cass. com. 20 November 2012, Diptyque, No 12-11753; see Jean-Marc Bahans and Michel Menjucq, Droit de la vigne et du vin, No 584, pp. 269 and 270.
86- “L’abus d’hygiénisme nuit gravement à la santé des marques”, Mélanges offerts à Georges Bonet, pp. 407 to 419, esp. p. 408.
87- CJEU 22 September 2011, Interflora, Case C-323/09 cited above