Winegrowers: why and how to register your wine trademark?

  A trademark is a right that confers a monopoly of exploitation on a name or logo, in connection with specific products and/or services. By registering a trade mark, one therefore obtains an exclusive right which is enforceable against third parties. The trademark also makes it possible to guarantee the origin of the products/services it designates. It thus plays an essential role in a competitive market, such as that of wine, because it makes it possible to identify the products of a given producer. It is therefore essential for a wine producer to protect the name of his products, through a trademark registration.. But wine trademark regulations are complex. One has to be careful when filing, looking for a compromise between marketing requirements and legal constraints. Here is our advice for registering your wine trademark.  

1. The requirements for your wine brand name

As with all trademarks, the sign chosen must be distinctive and available. He shouldn't be disappointedThis means that it must not be "of such a nature as to mislead the public, particularly as to the nature, quality or geographical origin of the product". The difficulty with wine trademarks lies mainly in their deceptiveness. Certain terms cannot be used freely. On the one hand, it is not possible to register an appellation of origin (AOP/AOC) as a trademark. Indeed, these designations are intended to be used by anyone who respects the specifications. They cannot therefore be the subject of a monopoly via a trademark registration. However, it is possible to register a complex trademark, including the mention of a PDO/AOC. In this case, the trademark must include distinctive elements. In addition, a trademark including an appellation of origin can only be registered if it is intended to be used for wines entitled to the appellation. For this reason, the trademark "Cru du Fort Médoc", under which a Bordeaux supérieur AOC wine was marketed, was cancelled because it was not entitled to the Médoc appellation. (Bordeaux Court of Appeal, March 10, 1980: PIBD 1980, n° 264, III, p. 169). Thus, regulatory conditions govern the use of enhancing words (such as château, domain, tower, cru, clos, etc.). Thus, the name of the wine estate can only be registered as a wine trademark if it has a real existence, and if the vinification has taken place on the spot.  

2. The importance of prior art research in viticulture

Due to the large number of earlier wine brandsit is essential to carry out anteriority searches to ensure the availability of your wine brand.. The search should not be limited to identical marks, but should also take into account marks that are only similar. Indeed, there are many conflicts in this field. For example: the trademark PHILIPPE LE ROY was considered similar to the trademark LEROY. Similarly, the mark CHEMIN DES LICES could not be registered because it was too similar to the mark LICES. Finally, the mark CHATEAU LAMANON was cancelled because of the earlier mark MANON. In order to avoid registering a trademark that is too similar to that of a third party, it is essential to carry out a thorough prior art search. Do not hesitate to ask an expert to assist you in these steps.  

3. Monitor and defend your wine brand

The protection of a wine brand is the sole responsibility of its owner, and the registration of the brand is only one part of this protection. One must constantly monitor one's trademark. This ensures that it is not used by usurpers. It is estimated that all wine brands are susceptible to copying, either by imitation or forgery. If you identify a disturbing use, it is necessary to act as quickly as possible. Some adulterations can even constitute a real public health problem. Among the actions at your disposal are technical innovations, allowing the bottles themselves to be protected and/or traced. On a purely legal level, there is also opposition, counterfeiting or unfair competition. If you do not have the time to carry out this monitoring, you can of course entrust the management of your wine brand to a professional attorney, who will inform you of similar applications to your trademark, which will allow you to react quickly, via the opposition procedure. In summary, it is essential for a producer to protect his wine brand. To limit any risk of action, it is advisable to carry out a prior art search prior to filing. And after filing, it is recommended to set up a surveillance of your trademark, to avoid any usurpation. Our team is at your disposal to advise you and accompany you through these different stages.