By Anushka Agarwal
The case of Bollinger v. Costa Brava Wine Co Ltd[i] not only preserved the rights to the term ‘champagne’ produced in the Champagne District, France, but also featured an important common law remedy of Passing Off. As Lord Halsbury said, “no one has any right to represent his goods as the goods of somebody else”[ii]. This remedy protects from misappropriation of marks and business names or get-up that are not registered from being passed off as someone else’s. [iii] In such cases, the claimant loses the customer because the latter is deluded by the evils of unfair competition. This principle seeks to safeguard the goodwill between the trader and his customers, which the mark helps to create and provides for damages.[iv] Passing off can be of two kinds. Reverse passing off is when the defendant markets the claimant’s products as his own. Whereas passing off in the extended form is the misrepresentation of a particular quality of a product or service causing harm to the plaintiff’s goodwill. This is similarly seen in this case. Here, the claimants shared a reputation in a descriptive name such as ‘champagne’, leading to a blur between the quality and the origin.[v]
The claimants in this suit were Twelve French companies, appealing on behalf of all the wine producers in the Champagne district of France, who supplied to England and Wales. They had requested for an injunction restraining the defendants from applying the trade descriptions ‘champagne’ or ‘Spanish Champagne’ to advertise their wine made in Spain from grapes cultivated in Spain.[vi] The issue before the court was whether the term ‘Spanish Champagne’ would mislead the public, resulting in passing off. The plaintiffs contended that champagne produced in the Champagne District, France, had been long acknowledged to be in trade and had attained such a high reputation that one would misconstrue the defendant’s wine to be champagne.[vii] The defendants denied the allegations because the word ‘Spanish’ was present.[viii] Nevertheless, the court observed that the defendant’s wine was sold in Spain as “Peralada“ and the tagline used in England was “Giving a Champagne Party” which demonstrated that it was not an innocent passing off. The court allowed the injunction as there was a conspicuous attempt to secure wine sales with the goodwill and reputation attached to the champagne and the plaintiff’s business.[ix]
THE CLASSIC TRINITY TEST
In Reckitt & Coleman Products v. Borden Inc[x], the Classic Trinity Test was laid down, which sets forth that first there should be goodwill or reputation attached with the goods. The claimant in such instances must prove that their trademark has been passed off. There must be a misrepresentation (whether or not intentional) misleading the public and that he suffers or in a quia timet action, that is likely to suffer damage by the erroneous belief caused by the defendant.[xi] As for India, the court in Hindustan Radiators Co. v Hindustan Radiators Ltd,[xii] expanded further on these factors for determining passing off. The goods of the plaintiff must have gained distinctiveness and must be identified in the minds of the public as goods of the plaintiff, such that the term’s usage in the defendant’s goods is likely to deceive and cause confusion in the public mind and injury to the business reputation. The nature of the activity and the market of consumption of the goods of the parties to the passing of action must be the same.[xiii]
This case is relevant as it not only deals with the reputation of one producer but also the collective and shared goodwill of all the producers in the Champagne district in France. The public associates all the producers in France as Champagne producers for which they share a joint reputation in the name of products with particular qualities. Simply put, all those who supply it from France have a share in the reputation. Champagne, vodka, sherry, scotch whisky, advocaat can be seen as examples.[xiv] Additionally, the court in the Spanish Champagne case established that the champagne in England meant to be only the wine produced in the Champagne district and had never come to mean a term to refer to wine.[xv] It is not a generic English word like ‘Burgundy’.[xvi] It is a French word that refers to a product of Champagne, from the area around Rheims in France and would be wrong to associate it with anything else. To explain further, around the world, champagne is not used to define a country’s wine. [xvii] The Italians call their wine ‘Asti’, the Germans ‘sekt’, the South African ‘dry dominion.’ This signifies the distinctiveness of the product, irrespective of who makes it in the Champagne district to establish that there was reputation. Also, it should be noted here, had the defendants built an independent honest reputation in England, they still would not be able to use the name in that area, regardless of the reputation it enjoys in other parts if the claimants show they have a reputation in the same product.[xviii]
Apart from goodwill, it was imperative to show that the defendant’s Spanish Champagne’ would cause deception and the likelihood of confusion to the public. The Indian Courts in Prius Auto Industries Ltd. v. Toyota Jidosha Kabushiki Kaisha[xix] did not grant an injunction on the sole basis of goodwill. Toyota had to prove that there would be confusion in the Indian market with Prius because Toyota had not trademarked Prius and had relied on the Universality Principle. Here, there was a scope for confusion and deception because of adding the adjective ‘Spanish’; people would misunderstand the product as a substitute, not realizing the difference. Evidence and testimonies that a considerable part did not know about the various wines and their origins convinced the courts in this case. To establish deception, factors such as education and knowledge of the customer, the frequency of the usage of the product, etc. should be taken into count. Consequently, in this case it was seen that misrepresentation was bound to occur as people would decide on which wine to buy only for a celebratory occasion. This case was a notorious example of passing off as the court looked at surrounding facts like the change of name from ‘Peralada’ to ‘Spanish Champagne’ and the tagline to establish misrepresentation. Lastly, the misappropriation is enough to treat it as damaging and to claim damages, there is no need for proof of loss of trade.[xx]
HOW DIFFERENT IS PASSING OFF FROM TRADEMARK INFRINGEMENT
The remedy of passing off should not be confused with trademark infringement. The former serves as a common law remedy to protect unregistered trademarks and is recognized under Section 27 and 134 of the Trademark Act, 1999(‘Act’).[xxi] Whereas, the latter is a narrower statutory right to protect registered trademarks under Section 29 of the Act.[xxii] The case of Bikanervala v. Bikaner Sweets, where the defendants mark had an identical appearance in terms of colour scheme and font with the plaintiff’s mark except the suffix ‘wala’, serves as an example for trademark infringement.[xxiii] The plaintiff could establish that there was secondary meaning to the ‘Bikaner’ apart from being a geographical term. The public could relate to the term and it had gained goodwill and reputation in the last 20 years[xxiv]. Therefore the injunction was allowed for trademark infringement under Section 29. India has a large rural population which makes passing off as a remedy even more imperative to have.
CHAMPAGNE AS IT IS TODAY
Champagne can be detected back to the coronation of French Royalty. They anointed royals in the Cathedral at Reims which is the heart of the Champagne district. [xxv]To secure the interests, the European Union now gives ‘champagne’ protection under the tag of a Geographical Indicator. However, in the United States, some argue it to be a generic term.[xxvi] Despite that, the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) provides for sparkling wine to be called ‘champagne’ if simply it originates from the Champagne region of France.[xxvii] Comité Interprofessionnel du Vin du Champagne (CIVC) has protected consumers against false claims made for any wines, beverages or products that trade-off champagne’s reputation. They have preserved the term ‘champagne’ even when it has been associated with products other than wine. The Yves- Saint Laurent named their perfume “Champagne” in 1993[xxviii] which was eventually banned. In 2013, Apple launched a champagne-colored iPhone and was later asked to change the color as the color of champagne could not be determined.[xxix] Over the years, many have sought to defend the exclusivity of champagne, yet with innovation and modern substitutes, more issues are bound to emerge.
[ii] Perry v. Truefitt, (1842) 6 Beav. 66, 73.
[iii] William Cornish Et. Al., Intellectual Property: Patents, Copyrights, Trademarks & Allied Rights Classic Series, (Sweet & Maxwell, 8th ed. 2013).
[iv] Id. at 652; Erven Warnink v. Townend, (1980) R.P.C. 31 HL; Harrods v. Harrodian School, (1996) R.P.C. 697 CA.
[v]Bollinger, supra note 1, at 278.
[vi] Bollinger, supra note 1, at 277.
[ix] Supra note 5.
[xi] Id. at 652.
[xii] Hindustan Radiators Co. v. Hindustan Radiators Ltd, (1987) PTC 73.
[xiv]WILLIAM, Supra note 3.
[xv]Bollinger, supra note 1, at 282.
[xvi]Bollinger, Supra note 1, at 283.
[xvii]Bollinger, Supra note 1, at 285.
[xviii]WILLIAM, Supra note 3; Cavendish House v. Cavendish-Woodhouse, (1970) R.P.C. 234 CA; Levey v. Henderson-Kenton, (1974) R.P.C. 617.
[xix] Prius Auto Industries Ltd. v. Toyota Jidosha Kabushiki Kaisha, CS (OS) No. 2490 of 2009, Civil Appeal Nos. 5375-5377 of 2017.
[xx] WILLIAM, Supra note 3.
[xxi] The Trade Marks Act, 1999, § 27 & §134.
[xxii] The Trade Marks Act, 1999, § 29.
[xxiii] Bikanervala v. Bikaner Sweets, CS (OS) 1519/2007 & I.A. NO. 9440/2007.
[xxiv] Id. at 7.
[xxv] Tim Jay & Madeline Taylor, A Case of Champagne: A Study of Geographical Indications, 29 Corporate Governance eJournal 1, 16 (2013).
[xxvi] Gokcen Uzer Cengelci, More than Just A Mark – Geographical Indications, Trademark Now (Apr. 17 2020), https://www.trademarknow.com/blog/more-than-a-mark-geographical-indications
[xxvii] Weintraub Firm, Where is My Champagne? The IP Law Blog (May 4, 2012), https://www.theiplawblog.com/2012/05/articles/trademark-law/where-is-my-champagne/
[xxviii] Perfume Isn’t Champagne, The New York Times (Dec. 20, 1993), https://www.nytimes.com/1993/12/20/business/perfume-isn-t-champagne.html
[xxix]Courtney Schiessl, Why You Shouldn’t Call Sparkling Wine ‘Champagne’, Forbes (Oct. 18, 2018), https://www.forbes.com/sites/courtneyschiessl/2018/10/18/champagne-sparkling-wine-difference/?sh=192175322081; Brian Fung, French Wine Snobs warn Apple not to release a champagne iPhone, The Washington Post (Aug. 30, 2013), https://www.washingtonpost.com/news/the-switch/wp/2013/08/30/french-wine-snobs-warn-apple-not-to-release-a-champagne-iphone/
Image Source: Photo by Anders Adermark on Flickr