This article looks at the recent decision by the Intellectual Property Office of Singapore (IPOS) in the Matter of a Trade Mark Application by Keep Waddling International Pte. Ltd. and Opposition Thereto By Comite Interprofessionnel Du Vin De Champagne and Institut National De L'origine Et De La Qualite  SGIPOS 10.
Keep Waddling International Pte. Ltd. ("Applicant"), a local company selling sparkling wine originating from Chile, applied to register the trade mark "CHAMPENGWINE – UNIQUE
BOUTIQUE SPARKLING WINES OF CHILE" in the form " " ("Applicant's Mark") in Class 33 in Singapore in respect of "sparkling wines, all originating from Chile".
The application was opposed by Comite Interprofessionnel Du Vin De Champagne and Institut National De L'origine Et De La Qualite (collectively "Opponents"). Both organisations are mandated in France to protect the "CHAMPAGNE" geographical indication worldwide.
The Principal Assistant Registrar ("PAR") found that the Applicant's Mark did not violate the Geographical Indications Act, was not deceptive, and the use of the Applicant's Mark did not constitute passing-off, but nonetheless refused the registration of the Applicant's Mark on the ground that there was bad faith on the part of the Applicant.
On the issue of whether there had been any misuse of a geographical indication in the absence of authorities, the PAR approached this question on the basis of principle and decided
that "champagne" and " " are not identical, and therefore the Applicant's Mark does not "contain or consist" of the geographical indication "champagne".
On the issues of deception and passing-off, the PAR noted that the Applicant's Mark not only consisted of an invented word "CHAMPENG" but also the unequivocal tagline "UNIQUE BOUTIQUE SPARKLING WINES OF CHILE", and the specification of goods in the Application was "sparkling wines, all originating from Chile". Further, in retail outlets and restaurants, wine bearing the Applicant's Mark would be categorised and offered for sale as "Sparkling Wine" with its geographical indication clearly indicated, i.e. Chile.
Considering the circumstances, the PAR concluded that the relevant public in this instance, consumers who purchase and drink wine or sparkling wine, were unlikely to be deceived into thinking that the sparkling wine bearing the Applicant's Mark originated from Champagne. Similarly, the Opponent's claim of passing-off cannot be established.
However, the PAR could not accept the Applicant's explanation as to how the Applicant's Mark was formed. The PAR observed that the naming convention for the Applicant's PENGWINE-branded wines is to name each wine after a different species of penguin native to South America, and using a prefix of "cham" as an allusion to the method of production ("methode champenoise") of a wine is not in line with this long-standing convention. "Methode champenoise" is recognised in the European Union as a method of production of wine from Champagne, while the same method used for sparkling wine produced outside of Champagne is usually described as "method traditionelle". Hence, the subjective test of bad faith was satisfied.
On the objective test, the PAR took into account that no other sparkling wine sold online, in brick-and-mortar retail wine shops or supermarkets, or in restaurants and bars, have a name remotely similar to "champagne", and the PAR was satisfied that the dealings with the Applicant's Mark was, for the reasons above, "an act that falls short of the acceptable commercial behavior observed by reasonable and experienced men in the relevant trade". Accordingly, a case of bad faith was made.
This is a rather unusual case where despite no findings of wrongdoing in terms of deception, misuse of geographical indication, or passing-off by the Applicant, there was still somehow a finding of bad faith against the Applicant.
Whilst bad faith is not limited to acts of fraud, dishonesty and/or a breach of any legally binding duty upon an applicant, but includes dealings which would be considered as commercially unacceptable by reasonable and experienced persons in a particular trade, an allegation of bad faith is a grave claim to make and the threshold to establish bad faith is typically quite high in most jurisdictions. On the facts of this case, it seems overly generous to the Opponents for the PAR to have found bad faith on the part of the Applicant, and overly paternalistic to the relevant public in this instance, consumers whom the PAR had determined were unlikely to be deceived into thinking that the sparkling wine bearing the Applicant's Mark originated from Champagne.
The opposite outcome was reached in the Chewy Vuiton case in the US, where the luxury fashion house Louis Vuitton failed to stop the use of the trade mark "Chewy Vuiton" on chew toy handbags for dogs. Is the difference because of how the concept of "parody" operates in the US? Or could it also be attributed to a heightened sense of duty in Asia to protect IP rights owners and the public? Unfortunately we will never know, as the deadline for appeal has passed, and no appeal appears to have been filed.
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