The use of the image of a competitor’s castle on wine labels may constitute an act of unfair competition that could cause remarkable problems for the castle owner.
Supreme Court found as such in its 28 June 2012 judgment and although this is an old decision, its unique nature in respect to wine trademarks warrants a special focus.
In principle, the owner of a property does not enjoy the exclusive right to the property’s image and cannot, therefore, prohibit its reproduction, except in order to demonstrate any remarkable problems that could be caused by said reproduction. Unfair competition may constitute a remarkable problem.
In this case, the Castle Marie du Fou Company is the owner of the Mareuil Castle and uses its image on its protected appellation of origin Mareuil wine labels.
The Company then discovered that its competitor, the Jard Chai Mareuillais Company, also marketed protected Mareuil wines that they used labels which reproduced the Mareuil Castle.
The Castle Marie du Fou Company therefore assigns unfair competition and parasitism to its competitor due to the use of the castle image.
The Supreme Court recognized that the reproduction of the image of the Mareuil Castle owned by the plaintiff, by the Jard Chai Mareuillais Company was likely to create a risk of confusion in the mind of the public concerning the wine products of each company that bare the protected appellation of origin Mareuil. This risk being even greater as the production of Mareuil wine is concentrated in a very restricted region close to the Mareuil commune.
A remarkable problem is proved here as the exploitation of the image of another’s property to promote one’s own products can create a risk of confusion in the mind of the public.
This decision serves as a reminder that trademark law is not the only lever available to enforce your rights vis-to-vis unscrupulous competitors. Unfair competition is another way to achieve this.
That being said, it is important that your trademarks are properly protected as it is, in effect, easier to act on the grounds of infringement. As it is sufficient to show that the sign or opposing trademark constitutes an imitation of your brand (if it is not an identical reproduction), creating the risk of confusion in the mind of the public, in order for your competitor to be sentenced.
For unfair competition, one must demonstrate a particular fault of the defendant and the resulting prejudice for your company, which is not always easy to prove.
REGIMBEAU has a team specialising in wine trademark law is your disposal to advise and guide you in the protection and defence of your rights.
