Wine Law

31 the trademark “Jean-Jacques and Sébastien Royer” (registered in 2002) and the company Champagne Royer père et fils who owns the trademarks “Royer & Cie” and “Royer” (registered in 2010 and 2011) but also “Royer père et fils” (registered in 2005), in use since 1969, as an earlier corporate name and trade name, as well as domain names, all composed of the name Royer. It has been ruled that the 2002 trademark “Jean-Jacques and Sébastien Royer” was registered in good faith since it contains first names. However, the 2010 and 2011 trademarks “Royer & Cie” and “Royer” are likely to be confused with the 2002 trademark and are fraudulent since the prior existence of the trademark "Jean-Jacques and Sébastien Royer" could not be ignored by Champagne Royer père et fils, nor the risk of confusion in the mind of the consumer. However, it “ deliberately chose to omit any element that could distinguish their marks from that of Royer Jean-Jacques ” 61 . The same reasoning and assessment of the likelihood of confusion apply in the case of identical toponyms designating different terroirs. Indeed, where a wine-grower has always used in good faith and without risk of confusion with the prior trademark of a place name, coexistence is possible, subject to the addition of another element. It is known in France as “ privilège de tènement ”. In a famous case, the Court of Appeal in Bordeaux acknowledged the right of “Scea Vignobles Guerin” to use the toponym “Petrus” both in its commercial name and in its trademark, since the cadastral Petrus plots of land are included in its vineyard. The “Chateau Petrus Gaia” trademark was therefore considered as valid in the absence of any likelihood of confusion with the trademarks registered by the company Château Petrus. It has been pointed out that although the two signs apply to identical products, namely wines, the worldwide reputation of Château Petrus producing wines of the controlled “Do Pomerol” is in itself such as to avoid any risk of confusion in the mind of the consumer with a trademark applied to wines of the controlled “Do Bordeaux Supérieur” 62 . The absence of likelihood of confusion and good faith are therefore decisive. 61 French Supreme Court, 16 October 2019, No. 17-20940 & Douai Court of Appeal, 16 March 2017. 62 Bordeaux Court of Appeal, 21 November 2005.