WTO Reports Continued Progress on Multilateral Register for Geographical Indications for Wines and Spirits

In the WTO’s continuing efforts to move forward the 13-year old agenda on a multilateral register for geographical indications for wines and spirits, the WTO reported last week that a small working group representing the divergent positions of the various member countries had completed two additional sections of “emerging text” for the register proposal.  “Emerging text” represents a single document which has the elements of each of the various WTO member positions reflected in bracketed text to reflect the differences between the positions, and unbracketed text to reflect the areas of agreement.  While the development of the emerging text is a positive step forward, the majority of such text still remains bracketed, indicating that any agreement on a format for a multilateral register for geographical indications for wines and spirits still remains fairly elusive.

To read the WTO press release on the negotiations click on the following link:

GARNET Trademark Sold by Saintsbury; To Become Stand-Alone Pinot Noir Brand

Saintsbury, owner of the GARNET trademark for wine (U.S. Reg. No. 1,669,670), has sold the brand to the principals of Silverado Winegrowers, a long-time grower for Saintsbury and the GARNET brand with vineyard holdings throughout California.  Saintsbury has used the GARNET mark along with its SAINTSBURY house mark in the manner shown in the label below:

The new owners have indicated that they intend to establish GARNET as a stand-alone brand for a 100% estate-grown Pinot Noir line of wine sourced from their vineyard holdings, including their Carneros vineyards that served as a source for the GARNET wine produced by Saintsbury.  The new owners have also acquired Saintsbury’s Sonoma production facility that was used to produce the GARNET wine to ensure a seamless transition of the brand.

An examination of the Trademark Register at the U.S. Patent and Trademark Office indicates that Saintsbury was very successful in preventing others from registering marks similar to, or encompassing the mark GARNET, thereby maintaining a broad scope of protection for the mark.  This allows the new owners greater flexibility in transitioning the mark from a brand used in association with the SAINTSBURY house mark to a stand-alone brand with its own distinct brand significance.

For further information or assistance on trademark matters contact Scott Gerien at [email protected]

Some Movement at WTO on Multilateral Register for Geographical Indications for Wines & Spirits

In what is being touted by the World Trade Organization (WTO) as the first attempt to produce a single draft text for a Multilateral Register for Geographical Indications for Wines and Spirits pursuant to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), representatives from WTO member countries met this month and put together a written draft of their conflicting positions on how one would notify a geographical indication for wines or spirits for registration on a multilateral register.

As some background, WTO members agreed during the Doha Development Round of WTO trade negotiations in 2001 to develop a multilateral register for geographical indications for wines and spirits so that terms such as Cognac, Napa Valley and Barolo could receive recognition or protection as place names at the international level.

However, exactly what such protection would be and how it would be accomplished was not set forth in any manner at the Doha Rounds and the negotiations that followed demonstrated that there were vast differences between WTO members as to what these should be.  On the one side was the “new world” led by the U.S., Australia, Canada and others which believed that the multilateral register should be nothing more than a list of wine and spirit geographical indications that would simply serve as a reference for WTO members with no legal effect.  On the other side was the “old world” led by the European Union, Switzerland, and later a network of developing countries seeking to tie their own IP interests to the geographical indication issue, which wanted mandatory protection of wine and spirit geographical indications in all WTO countries once placed on the multilateral register.

Between these two groups was Hong Kong, which set forth a “middle ground” proposal which attempted to address concerns raised by both sides: on the one side, the new world countries were concerned with conflicts of geographical indications with trademarks and terms which were generic in some countries, such as Champagne; on the other side, the old world countries sought to have some type of legal effect for the registration system so that geographical indications would have protection on par with other types of intellectual property.  Along with Hong Kong, a middle ground position has also been proposed by the International Trademark Association.  Both of these proposals have provisions for the protection of trademarks with prior rights and recognition of generic terms, while also allowing geographical indications with no conflicting issues to be recognized and protected with legal effect.

Since Doha, the process has been characterized by gridlock with very little movement on the principal issue of the multilateral register for wines and spirits, and expansion of the gridlock by adding other controversial topics to the discussion, such as expansion of such a register to goods other than wines and spirits.

The WTO has set a deadline of the end of the first quarter of 2011 for a draft written text covering six different points related to the Multilateral Register.  This development this month is movement on the first point.  It is an ambitious plan, but given the lack of movement over the past 10 years, certainly something to be optimistic about.

For more information on the current negotiations on the Multilateral Register for Geographical Indications for Wines and Spirits, follow the below link to the WTO web site:

http://www.wto.org/english/news_e/news11_e/trip_ss_13jan11_e.htm

For more information on assistance with protecting geographical indications in the U.S. and abroad, contact Scott Gerien at [email protected]

Most Interesting New Wine Trademark Applications Filed in December 2010

Each month the editors of Lex Vini will select the most interesting wine trademark applications filed with the U.S. Patent and Trademark Office in the prior month.  In keeping with the broad meaning of “interesting,” the marks may be selected because they have significant business interest, they demonstrate potential new themes in branding, or simply because they are quirky and different.

In December of 2010, there were two themes which appeared to have some popularity for trademarks in the wine sector: lust and candy (surprising for Christmas considering these are usually reserved for Valentine’s Day). 

In the lust category, there were filings for NAUGHTY VIRGIN (App. Ser. No. 85/202,467 by Pazdar Beverage Company), LIVING IN ZIN (App. Ser. No. 85/194,073) and PEEP SHOW (App. Ser. No. 85/189,663 by Terravant Wine Company).

In the candy category, there were filings for the marks CHOCOLATE CUVEE (App. Ser. No. 85/203,314 by One Plus Two, Inc.), LOLLIPOP (App. Ser. No. 85/199,787 by Paterno Imports Ltd.) and ITALIAN CHOCOLATE (App. Ser. No. 85/200,611 by Rocland Estate Pty Ltd).

Also, in the “odd combination, but undoubtedly distinctive” category of wine trademarks were STEAK AND POTATOES (App. Ser. No. 85/189,627 by Terravant Wine Company) and FALCON AND HIPPO (App. Ser. No. 85/205,742 by Clare Ranch LLC).

In an apparent attempt to capitalize on the shift in Congressional leadership there was also RIGHT WING RED (App. Ser. No. 85/203,291 by One Plus Two, Inc.), in what might be an homage to Jersey’s favorite mobster was TATTOO TONY’S from Atlantic Bottling, LLC in Ocean, NJ (App. Ser. No. 85/208,584), and in what might be marks “inspired by” Bay Area rock bands there was GRAPEFUL RED (App. Ser. No. 85/191,662 by R.H. Winery LLC) and RHUBY DOOBY (App. Ser. No. 85/206,440 by Guinan Family Winery & Vineyard, Inc.)(although this last one could also be a tribute to 70s cartoon icon Scooby Doo — “rhuby dooby doo”).

Never boring in the world of wine trademarks.

For assistance on your trademark matters contact Scott Gerien at [email protected]