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Jeremy Ord of Dimension Data fame founded Waterford Wine in 1998 in the region of Stellenbosch and this winery has since been producing award winning wines. This relatively small winemaker was recently triumphant in defending its European Community trade mark application for its wine label, incorporating the words WATERFORD STELLENBOSCH.
The trade mark application was opposed by Waterford Wedgwood (Waterford Crystal), producer of the well known WATERFORD glassware and Royal Doulton porcelain. As to be expected, the opposition by Waterford Crystal to the application for WATERFORD STELLENBOSCH was on the basis that it was confusingly similar to its trade mark registration WATERFORD for glassware and in use it will result in consumer deception with Waterford Crystal’s WATERFORD wine glasses.
Waterford Crystal’s opposition was rejected by the EU’s Office of Harmonization for the Internal Market (OHIM) on the basis that the trade marks were not identical, as the trade mark WATERFORD STELLENBOSCH included other elements other than the term “WATERFORD”.
Further, it was held that there was no likelihood of confusion as wine and wine glasses were not similar. The fact that wine is generally drunk in a glass was held to be insufficient evidence of similarity in this respect.
On an appeal to the First Board of Appeal of the OHIM, it was held that the trade marks were highly visually, phonetically and conceptually similar. Further, it was decided that wine and wine glasses were confusingly similar on account of the connection between them and the high degree to which they complement each other.
The European Court of Justice (ECJ) held on a further appeal, however, that in determining whether a likelihood of confusion exists, the trade marks WATERFORD and WATERFORD STELLENBOSCH must be assessed globally, taking into account the visual, aural and conceptual similarities between the trade marks, as well as the similarity between wine and wine glasses.
In determining whether wine and wine glasses are similar goods, the court considered their nature, intended purpose, method of use and whether they were in competition with each other. It held that wine and wine glasses are distinct in their nature and use, further, they were not in competition with each other, nor did they originate from the same areas.
Where a wine glass and a bottle of wine are distributed together, it was held that this is normally perceived by consumers as a promotional attempt to increase sale of wine rather than an indication from the producer that he intends to trade in articles of glassware. Therefore, even taking into account the strong reputation of the trade mark WATERFORD, in relation to wine glasses, the ECJ confirmed that there was no likelihood of confusion as wine and wine glasses are not similar, despite the existence of a certain degree of complimentarity between them.
The victory by Waterford Wine confirms the position in South Africa that trade marks have to be assessed globally in determing whether there is a likelihood of deception or confusion. This decision further sheds light on the trade mark inquiry of confusingly similar trade marks, in determining whether goods are similar, and that even complimentary goods may be considered to be dissimilar.