On 21 November 2012, the Paris Court of Appeal issued a ruling in which it concluded that there was no imitation between the Ducluzeau trademark and the Château Ducluzeau semi-figurative trademark opposed by Mr. Pierre Barrière of J.E Borie (SA) who, in the absence of a renewal, had proceeded with an application of his Château Le Cluzeau trademark.
The reason upheld by the Court to justify the absence of a risk of confusion between the trademarks is quite surprising; it notes, in fact, that the previous semi-figurative trademark includes, apart from the Château Ducluzeau mark, representation of property as well as titles such as Listrac Médoc, while the new application only contains a name. What a flagrant difference these signs make aside from the repetition of Château et Cluzeau! Unlike the term Ducluzeau which refers to a product in the semi-figurative mark, the name Le Cluzeau refers to a proper name.
This analysis is not only perplexing but it also shows the difficulty involved in bringing litigation before the appropriate court with respect to wineries, which in turn have their own set of particularities that are frequently unknown to jurisdictions outside the Bordeaux region.
Here are some reminders regarding the procedure on counterfeit action:
In French litigation, Article 42 of the Civil Code states that the competent tribunal is that of the domicile of the defendant.
Article 46-2 specifies that the applicant may choose to bring the defendant before the court where the harmful event occurred or where the damage was sustained.
Given the highly specific nature of counterfeit problems in the wine-making industry, they are often analysed by jurisdictions in Bordeaux with due consideration given to factual and toponymic criteria with which an “outside” judge may be less familiar.
In this case, we strongly doubt that a Bordeaux-based judge would have ruled out imitation based on the same criteria as those upheld by the Paris Court of Appeal, which, by diverted motives, seems to want to justify the absence of the renewal of the contested trademark and thereby validate their coexistence. But is it a judge’s role to be sentimental?
This illustrates the fact that before initiating a counterfeit action, especially in the wine sector, it is essential to try as far as possible to bring the matter before a court based in Bordeaux.
The following options are possible:
- If the defendant resides within the jurisdiction of the court concerned, which is not always the case, or,
- If the damage was sustained in this same jurisdiction (for example, the report of counterfeit bottles sold in the region).
On the other hand, if financial constraints have led you to abandon your previous French trademark in favour of a Community trademark, you would have no other choice but to bring the defendant before the Paris Court of First Instance since it is the only competent court that handles such conflicts. In that court however, justice may not be served!