For those concerned about protecting geographical names for wines and spirits an important question is whether if someone uses part of the protected name they infringe the rights of the producers of the wine or spirit in question. That was the important issue in proceedings which LBMW fought recently for those entitled to the geographical names Cognac and Napa Valley, in the UK Intellectual Property Office. The owner of a Napa Valley winery wanted to register a new name “NAPAÑAC” as a UK trademark for brandy, fortified wines and spirits.
As you might expect, Cognac is a protected geographical indication for cognac which is of course an internationally known brandy and Napa Valley is a protected designation of origin for high quality wines, so both names are entitled to protection under the respective regulations (for Cognac Regulation (EU) no. 2019/787; and Regulation (EU) No 1308/2013 for Napa Valley) and each of these regulations is part of UK law including after Brexit. The question in each case where part of the name is used is whether the new name will trigger the idea of the protected name in the minds of typical consumers. The name “NAPAÑAC” obviously starts with Napa but we successfully established that that was enough to trigger the idea of Napa Valley wines in the minds of consumers where used for fortified wines.
The new name uses the second half of the name Cognac. Furthermore the fact that the name uses the Spanish tilde symbol ~ on the N means that those who know some Spanish (and many people have travelled to Spain on holiday) would know that it is to be pronounced as in the notorious Spanish word mañana, so we were able to contend that the new name was phonetically similar to Cognac as well as being visually similar. Even though the hearing officer of the UK IPO thought that many consumers would think that the new name was pronounced differently from Cognac, (like “knack” in contrast as it were to “NYAC”) our arguments and the evidence which we and Cognac and Napa Valley found succeeded and the IPO concluded that the use of the name “NAPAÑAC” was enough to trigger the idea of Cognac in the minds of consumers where used for brandy and spirits and exploit the reputation of the protected name. Hence, even if the applicant intended to present the product as originating from Napa Valley, rather than from the Cognac region of France, the fact that it evoked the idea of a brandy similar to Cognac meant that the new name would evoke Cognac and trigger the idea of Cognac in the minds of consumers. In succeeding in the opposition proceedings, we overcame arguments from the applicant that two protected names cannot be evoked by another name simultaneously: in other words it was argued that a combination name cannot trigger the idea in consumers minds of two different protected names at the same time. The fact that our arguments prevailed results in an important conclusion for everyone entitled to use a protected geographical name.
The Applicant’s application for the trademark was refused on these grounds, and the Applicant was ordered to pay £3,500 to each opponent towards their respective legal costs in the opposition proceedings.