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Trademarking Your Wine in the EU

 

On May 20, world leaders at the World Intellectual Property Organization met in Geneva, Switzerland for a two-week conference where they adopted the Geneva Act of the Lisbon Agreement.  This Act would provide better protection for geographical indications (GIs) for trademarks.  GIs indicate the origin of a product which is important to many business owners and consumers, especially in the wine industry where the origin of the products and wine-making processes has a huge effect on the quality of wine.  GIs function to give confidence to consumers who readily recognize these indicators as a sign that a product has originated in a certain area or region, and helps a consumer to recognize a quality product from others in the marketplace.

The benefits that come from registering one’s mark abroad, particularly in the European Union (EU), has numerous benefits for growing companies.  One of these benefits is that a company can receive protection where there is a market comprised of nearly 500 million consumers.  With nearly 40 percent of the U.S. exports going to the EU, international trademark laws have played a huge role for U.S. wine companies that send their products to the EU.

The Agreement between the U.S. and the EU on Trade in Wine sets forth current regulations for importation of wine between the EU and the U.S.  Some of the provisions in the agreement provide that the U.S. must comply with certain labeling and naming standards that indicate the geographical origin for its wines.  Article 8 also provides that the wine shall not contain any “false or misleading information” regarding its “composition or origin.”[1]  For this reason, sparkling wines from the U.S. that were not approved before March 10, 2006 cannot label their product as Champagne—a region in France—since the wine grapes and manufacturing process did not occur in France and would be misleading to European consumers.

How Does This Process Work in the EU?

If a person’s trademark has not already been registered in any country, that person may apply for a trademark using one of two options.   One option is to register that mark at a national office to get protection in one of the EU countries.  Another option—which is recommended for protection in all the EU countries—would be to register for a Community trade mark (CTM) to be approved by the Office for Harmonization in the Internal Market (OHIM).  If a person has a registered trademark, but it has been registered outside of the EU, that person can apply for a CTM using an international registration (IR), designating the EU on the application using the Madrid Protocol, which is an international treaty that allows the 94 member countries to register their trademark in other member countries.

All IRs that originate in the U.S. must go directly through the United States Patent and Trademark Office (USPTO) in order to be filed.  To apply for an IR in the U.S., the applicant must first already have a “basic application” or “basic registration” in the U.S.  The mark and class designation that the owner seeks to register as the IR must be identical to the basic application or registration.  See 37 C.F.R. § 7.11(a).

It is important to meet these requirements since the fees for the application are nonrefundable if the international application cannot be certified. After the USPTO approves and submits the application to the International Bureau in Geneva, the Bureau then notifies the countries that have been designated to examine the applicant’s request to receive trademark protection.

The process of approval is very similar to the U.S.  One of the first issues considered by the OHIM is whether the mark is “capable of ‘graphical representation.’”[2]  In other words, the applicant must be able to draw the mark.  The OHIM also requires that the mark be distinctive and that it not be too descriptive.  Once the application passes the initial examination period, the trademark is then published and the opposition period begins.  During the opposition period of three months, a third party may challenge a mark, stating the reasons why the mark should not be registered.

For more details on the trademark registration process in the EU, you may visit the OHIM webpage.  If you would like assistance with trademarking an alcoholic beverage in the EU, you may contact us.

[1] Agreement between the United States and the European Community on Trade in Wine, TTB.gov (Mar. 10, 2006), available at http://www.ttb.gov/agreements/eu-wine-agreement.pdf

 

Written by:  Stephan Passalacqua

Contributed by:  Sonya Bryant

 

© 2015, Law Offices of Stephan Passalacqua.

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