It Really is ALL about the Name

Published in Orchard and Vine Magazine on: September 26, 2013

It is all about standing out. In any industry being known and having a recognizable name is essential to growth and success. In the wine industry, it is about distinguishing your product from all the others and getting the customer to buy your bottle over the next one. This is especially important for small estate vineyards where reputation and word of mouth are key marketing tools. A recent trade-mark opposition case before the Canadian Trade-marks Opposition Board addressed this issue.

A trade-mark is a word, a design, or a combination of these used to identify goods or services. A registered trade-mark gives the owner exclusive use to the mark for a set period of time. In Canada, this time period is 15 years with the option to renew every 15 years. Overall, your trade-mark allows you – and no-one else – to use the mark with your product or service and create an association between the mark and the goods or service. This is vitally important in an industry, like the wine industry, where you need to make your product stand out from the crowd and attract the customer.  

In this case, the applicant who requested the trade-mark, was the British Columbian family-owned Meyer Family Vineyards Inc. They wanted to trade-mark “CHARDONAKED” in association with their wine and wine coolers. Opposing the trade-mark was Vincor International, one of North America’s largest producers of wine. Vincor’s objection was based on Vincor’s “NAKED GRAPE” mark and design.

When the Opposition Board is determining whether or not a mark should be registered the standard it uses comes from the Supreme Court of Canada, the highest court in our country. The test to be applied is based on first impressions and imperfect recollection. Put simply, would a casual consumer who is in a hurry and does not carefully consider the mark, confuse it with another unrelated mark?

Intellectual property cases revolve around the distinctiveness of the property being protected and whether a consumer can distinguish between marks. This is to protect the creativity and innovation of those who have created something and taken the necessary legal steps to protect their ideas.  

In this case, the court decided the trademark could not be registered because, overall, the Board found the proposed mark “CHARDONAKED” could be confused with the registered mark of “NAKED GRAPE.”

While this is not the same word, the registration of a trademark prevents registration of confusing marks.

Upon applying the test of first impressions and imperfect recollection, the Board found that an average hurried consumer would likely conclude that the words were related, which would be unfair to the previously registered and established mark that has already acquired distinctiveness. Intellectual property cases are about protecting intangible property, such as ideas and reputations; therefore the Board has to look at whether allowing similar marks would be fair to the market, the consumer and both the party proposing the mark and opposing it.

In this case, the Board found the term “naked” had a prior association with “NAKED GRAPE” and was not common enough term in the wine industry to warrant its use without causing confusion to consumers.

The question, ‘What’s in a name?’ has an impact when discussing intellectual property because the name is what matters. When creating a trademark ensure it is unique and will not be confusing with marks already registered or, if not registered, previously used.

Contact your legal advisor and obtain advice if you have further questions regarding intellectual property related matters. 

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