Napa Valley trademark wins legal battle

The Napa Valley Vintners Association has prevailed in its lawsuit against the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce, according to a recent ruling by the Beijing High People's Court.

The final verdict has put an end to a decade-long dispute about the geographical indication for the famous wine brand, reported China Intellectual Property News.

The association applied for a certification mark with the national trademark office on Feb 6, 2005, using the words "Napa Valley 100%" and a logo. The mark was approved in 2007, to be used to identify wines from the Napa Valley in the United States, and is valid until 2017.

Napa Valley is the first wine region outside China to be recognized with the status of geographical indication.

On May 18, 2005, a domestic company in Hangzhou, Zhejiang province, applied for a "Screw Kappa Napa" trademark for wines.

The association filed objection against that trademark during the opposition period, claiming that "Napa" is a main part of the name identifying the origin of wines, so the Chinese company's trademark would mislead consumers.

The trademark office rejected the objection, and issued a ruling in June 2013, saying that the trademark in question had "obvious differences" from the association's geographical indication in terms of pronunciation, appearance and word constitution.

The association challenged the ruling with the Trademark Review and Adjudication Board the following month, but was rejected again in April 2014. It then filed a lawsuit against the board at the Beijing No 1 People's Intermediate Court.

However, the court ruled in favor of the board, saying the trademark in question was not similar with the association's, and would not lead to customer confusion.

The association appealed to the high court and finally won the case. The high court believed that although the trademark in question contains only one word from "Napa Valley", the word "Napa" is the most notable part in the name of the geographical indication, and consumers could easily think of Napa Valley when they see a Napa label on wines.

"A trademark does not have to look like another to mislead consumers," said Wang Xiaobing, a professor of the School of Law at Shandong University. "The premise of misleading is that the geographical indication has been widely recognized, and the result is that consumers mistake the origin of the product bearing the trademark in question."

In addition, even if the "Screw Kappa Napa" trademark is not misleading, it should be invalidated anyway, according to Wang.

He explained that the Agreement on Trade-Related Aspects of Intellectual Property Rights has an article about additional protection for geographical indications for wines and spirits.

The article says that all members of the agreement "shall provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as 'kind', 'type', 'style', 'imitation' or the like".

The article is also seen in the Register and Administration of Collective and Certification Trademarks, issued by SAIC in 2003.

(China Daily 09/21/2016 page17)