In the recent case of Bacardi & Company Limited v. G3 Enterprises, Inc ( SGIPOS 6), two vintage alcoholic beverage makers had their first legal bout at the Intellectual Property Office of Singapore for the exclusive right to use the term “Martini.”
Origin of the Contenders
The proceedings involve both a revocation action and an invalidation action between G3 Enterprises, Inc. (G3) and the Bacardi Group (Bacardi). G3 acquired the Louis M Martini winery in 1992. Located in California’s Napa Valley, the winery is named after its Italian founder and has been crafting signature, world-class cabernet sauvignon wines from the vineyards of the Sonoma and Napa counties since 1933. Third-generation family members are still running operations of the winery.
The opposing parties are the registered proprietors of the “Martini” mark (see below) TM No T0508163A. The Martini mark was first used by Martini, Sola & Company, which was later re-named Martini & Rossi in 1879. With its successful launch in Italy and later overseas, the company gradually grew into a group of companies collectively known as the Martini & Rossi Group. This group was subsequently taken over by Bacardi. The Singapore arm of Bacardi, Bacardi- Martini Singapore Pte Ltd (BMSPL), was set up in 1988 with the main function and purpose of marketing and distributing wines and spirits around the island-state.
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Bacardi-Martini Singapore (top) sought the exclusive right to use the term ‘Martini’ in Singapore, filing an opposition against the Louis M Martini winery (bottom).
Drawing the Battle Lines
Bacardi filed an opposition against G3’s “Louis M Martini” mark TM No. T1002552C in August 2011. In response, G3 filed this action for revocation and for a declaration of invalidity with respect to the Martini mark.
The questions before the tribunal in the revocation and invalidation actions are whether the Martini mark:
- is distinctive;
- is descriptive; or
- has become generic.
The Parties’ Arsenals
In submission, G3 highlighted that before April 18, 2005, (i.e., the registration date of the Martini mark), there were 62 references to “martini” as a generic cocktail drink. In comparison, there are only a total of 8 references to “martini” as a brand name. Additionally, G3 presented the following evidence in support of their case:
- the various articles from mainstream print media illustrating the development of “martini bars” in popular culture;
- the menus from various popular establishments serving “martini cocktails,” including Martini Bar @ Mezza 9, which is housed in the Grand Hyatt;
- the various recipes of the “martini” cocktail with variant ingredients; and
- the popularization of “martini” in the James Bond movies.
In response, Bacardi presented evidence which shows that:
- there is great consumer demand for products with the Martini mark;
- the distinction between the Bacardi Group’s products and regular “martini cocktails” have been made out in the market and maintained over the years and, in this respect, consumers are educated of the distinction between “MARTINI” as a badge of origin and “martini” as a cocktail; and
- Bacardi has employed famous personalities in conjunction with their advertising campaigns, which underlined the brand’s association with style, glamour, sophistication and exclusivity.
The Registrar was of the position that while the Martini mark is not distinctive, it is descriptive of the goods for which it was registered under Class 33 because evidence has shown that the marketplace and consumer environment have understood “martini” to refer to a generic alcoholic cocktail drink named after the cocktail glass.
However, G3 has only partially made out their case that the Martini mark is generic. The Registrar is of the view that such genericism is not the result of activity or inactivity on the part of Bacardi.
On the other hand, Bacardi was partially successful in resisting the invalidation action by demonstrating that the Martini mark had acquired a distinctive character from its use in the market in relation to vermouth (a fortified wine flavoured with aromatic herbs and spices) and sparkling wine, and these items may remain on the register.
This decision was only released on May 12, 2014, and at the time this article is written, no appeal papers have been filed in respect of the same. However, given the stake at hand, one could expect either party to pursue the matter further.
This article was first published in Asia IP on June 30, 2014. For more information, visit http://www.asiaiplaw.com.