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Intellectual property: Small is a size

03 May 2016

Intellectual property: Small is a size - read more

A fight over the word ‘piccolo’ in relation to its use on wine labels

In reading a case the other day, I started off being confused, which for a trademark lawyer is not always the best thing. In this case, the German protagonist was called Henkell & Co. Sektkellerein KG, and it concerned wine trademarks. A company of (what I thought) the same spelling also manufactured dishwasher tablets, soaps and all manner of cleaning things. ‘I didn’t realise they were in to wine as well’, I mused to myself. Of course they are not, as the industrial soap bubbles giant has only one ‘l’, not two in its name.

Mild confusion subsequently gave way to incredulity and disbelief: this was a fight over the word ‘piccolo’ in relation to its use on wine labels. As many of you will probably know, ‘piccolo’ means ‘small’ in Italian. Yet a German company, seeking to oppose an Italian company’s application for ‘PICCOLOMINI’ in respect of alcoholic beverages, claimed a monopoly in relation to the use of ‘piccolo’ as a trademark.

Evidential burden

A typical tactic in opposition matters is for the applicant to call on the opponent to prove that in the five years before the application, the opponent has actually used the trademark it is relying on to oppose the application. The earlier proprietor must establish that they have genuinely used the mark in that period.

I have commented before about the paucity of evidence trademark owners often put in for these cases and the dislike of EU institutions for the use of witness statements, statutory declarations, affidavits and the like, to prove such use. This is particularly so when they are from someone within the proprietor’s own organisation, such as a managing or marketing director, and use the statements to prove the truth of what they are saying. Preferred are statements from third-party bodies like chambers of commerce (more prevalent on the Continent).

However, the tribunal in the present case (the general court) appeared to accept that the use of statutory declarations was appropriate − albeit not as reliable or credible as third party declarations − provided that what it was saying was supported by other evidence. In this case it was sales figures, images of bottle labels, price lists, invoices and a marketing leaflet.

As it turns out, what the marketing director was saying, and the extrinsic evidence relied on, did not convince the court that what the director claimed was correct. Nevertheless, the court’s approach does seem to highlight a useful relaxation of what was otherwise a fairly strictly applied evidential burden.

At the initial stage, the Germans won having satisfied the opposition division (of what is now EUIPO, rather than OHIM) that they had used their mark in the previous five years. At the board of appeal, however, the decision was overturned. The case before the general court was about whether the board of appeal had been right to reject (in effect) the German’s evidence of genuine use.

Trademark nature

Frequently, the issue of genuine use is whether it falls within the relevant five-year period prior to the application, or else has the necessary extent of use within the EU. These were not in issue here.

The key was whether the use of the word ‘piccolo’ was used to indicate the source or origin of the goods in order to maintain or create a market for them. It can only do so if the relevant public – in this case, the general public – would perceive the use as being of a ‘trademark nature’ (for want of a better phrase).

The most significant piece of evidence before the court were the labels used on the bottles of wine. There were two labels: one around the neck and one around the body. The neck label had ‘henkell’ most prominently displayed, beneath which was a graphic symbol. The term ‘piccolo’ appeared below that symbol, but above the words ‘dry sec’, which were in smaller type.

For the body label, ‘henkell’ was written in large bold type, above which was the same graphic symbol as on the neck label, and ‘trocken’ below ‘henkell’ in much smaller type. On the actual packaging, ‘piccolo’ appears at the bottom in a font the same size as ‘trocken’ and accompanied with additional words in a smaller font.

Reading this, you will appreciate why the board concluded (and the court upheld) that ‘piccolo’ was a secondary or ancillary element. It was the term ‘henkell’, because of its size, prominence and position on the labels, that was considered to be the indicator of commercial origin.

Trade origin

It was the court’s comment on the bottle’s size that proved to be the death knell in the case. The term ‘piccolo’ (often abbreviated to ‘picc.’ on the invoices and price lists) was only ever used on bottles of 200ml size, in the same way that magnum was used on 1.5l bottles.

Moreover, that abbreviation mirrored the use of ‘tro. dry sec’, which it often followed, further indicating its descriptive nature about the size of the bottle − ‘trocken’ means ‘dry’ in German.
As the term could not be considered to be indicating source or origin of the goods, there could be no genuine use of the mark. The opposition, unless there is a further appeal, fails.

It does, however, beg the question as to why the Italian applicant seeks to include a term they also consider to be descriptive in their own mark. It remains to be seen as to whether ‘PICCOLOMINI’ will actually have the capacity to function as indicating trade origin, where ‘PICCOLO’ could not.

DIG for victory

As I have lamented before, it is often too late in the day when a trademark proprietor wakes up to the fact that the evidence provided to the agents or lawyers is insufficient. Panic breaks out and evidence from way back when tries to be introduced during the third round of hearings. This is also what Henkell tried to do, but the court rejected the evidence.

It did not, however, stop the court having a cheeky peek at it, only for them to dismiss it. None of it fell within the relevant period anyway, but it did highlight the sometimes desperate lengths gone to − some of the evidence dated back to 1935 and there was a consumer survey dated 1991. If only the same effort had been made at the beginning. However, even if it had, I doubt that it would have made any difference given it was passed its sell by date, so to speak.

So if you are ever involved in trademark litigation of whatever nature, or indeed, wherever in the world, remember the golden rule: DIG for victory.

Do as much research as you can to find all evidence relevant to the issues for the place and time in question.

Invite your lawyers/agents to consider this material (to see if there are gaps) as early
on as possible and well before proceedings start.

Get as much third-party evidence and support as possible for your point of view.

Paul Harris is a Partner at Venner Shipley Legal Limited

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