14 September 2018

A Dutch judge ruled on 30 July 2018 that the holder of a wine trade mark cannot oppose the use of a similar sign by a vodka producer if that sign indicates the main ingredient of the vodka. Wording that refers to the ingredients and preparation methods of products is not subject to the monopoly right of a trade mark holder and should be available for everyone to describe the characteristics of their own products. 

Does a vodka producer have the right to mention the most important ingredient on the label and packaging of its vodka bottles if the wording is very similar to a trade mark registered for another alcoholic beverage? That is the question which the President of the District Court of The Hague had to consider in a judgment dated 30 July 2018 (see link).

The plaintiff, a Dutch wine producer, sells wine under the name "La Tulipe". The wine producer has registered "La Tulipe" as a Benelux and international word trade mark and uses it in several registered domain names.

The defendant, a vodka producer, sells different kinds of vodka under the name "Dutch Tulip Vodka". The alcohol in these types of vodka is made from Dutch tulip bulbs. "Dutch Tulip Vodka" is mentioned both on the vodka bottle and on the packaging, in combination with a picture of a tulip, a short description of the vodka production process and the defendant’s figurative trade mark (the head of a famous botanist).

The wine producer considered that the name "Dutch Tulip Vodka" infringed its trade marks and was causing confusion.

In its defence, the vodka producer invoked the exception in trade mark law for descriptive terms which indicate the kind or quality of products. The holder of a Benelux or European trade mark does not have the right to prevent the use by a third party of a descriptive sign that indicates the kind and quality of a product. It is in the public interest that everyone is able to use the same signs and wording to describe own products and services.

The Benelux Office for Intellectual Property had rejected an application by the vodka producer to register "Dutch Tulip Vodka" as a trade mark due to the descriptive nature of the sign. The judge followed the reasoning of the Benelux Office and considered the term "Dutch Tulip Vodka" descriptive for the type of vodka. The judge ruled that the inclusion of the words "Dutch" and "Vodka" on the label and packaging reinforced the descriptive nature of the term "Tulip". 

The plaintiff acknowledged that the word "Tulip" refers to an ingredient of the vodka, but alleged nevertheless that the defendant had infringed its trade mark rights and engaged in unfair trade practices because, among other things, the word "Tulip" was printed larger than the words "Dutch" and "Vodka" and larger than the vodka producer's logo on the packaging. 

The judge came to the conclusion that the vodka producer was not acting unfairly. According to the judge, it is common to mention added flavours or organic ingredients on vodka bottles as prominently as the trade mark itself. The use of tulip bulbs in the production process distinguishes the vodka from other kinds of vodka which are normally produced based on grain or potatoes. The production process based on tulip bulbs explains the relatively high price of the beverage. The judge found this a justified reason for the vodka producer to highlight the word "Tulip". It was irrelevant that the alcohol in the vodka is actually made from tulip bulbs and not from the tulip flower. The judge ruled that the vodka producer is entitled to highlight the flavour and aroma of the tulip flower instead of the flavour and aroma of the tulip bulb, the actual ingredient of the vodka. The vodka producer is thereby granted some freedom to indicate the ingredients of its product.

This judgment is relevant to all Benelux or EU trade mark holders who want to oppose, on the basis of their trade mark right, the use by a third party of terms that refer to the ingredient or production method of the latter's products.