Posts Tagged ‘international’
All the while you tend your vines, and the U.S. market for the fruits thereof, your precious brand names may be vulnerable to poaching, in the world’s most populous country. Lindsey Zahn points out the risks in a recent article in the Cornell International Law Journal Online. The article is entitled “No Wine-ing: The Story of Wine Companies and Trademark in China” and it was published on November 4, 2013. It points out the risks and opportunities, and provides a good overview of how China treats wine trademarks, and how that differs from the U.S. system. Lindsey is a lawyer specializing in wine law and food law, and she is a frequent writer on such issues at winelawonreserve.com.
In the article, Lindsey explains:
China follows a “first-to-file” rule for trademark registration. This means that the first person to file a trademark application with the China Trademark Office (“CTMO”) is usually granted the registration rights. Prior use of a mark in commerce generally affords little or no protection to a trademark applicant in China. By contrast, the United States Patent and Trademark Office considers whether the applicant is the first to use or intends to use the mark in commerce.
If a business even contemplates entering the Chinese market, it is generally recommended that a trademark application be filed before any product or service is present in China’s market. Failure to file trademark registration can allow third parties—referred to as brand “squatters”—to register the mark. This presents many problems: the prior registration of the mark can block the true brand owner from registration or force the owner to change its name to enter the Chinese market. Other times, a brand owner is forced to pay exorbitant fees to the third party registrant in order to procure the rights to the mark.
Stolichnaya Vodka is pretty famous. And if it’s famous for anything, it’s famous for being Russian. For decades it has been glammed up as The Russian Vodka.
Over the past one to two years, however, Stoli has pretty much walked away from its Russian origin. The label on the right, from 2009, proudly proclaims Stoli’s Russian heritage and origin. By contrast, the label on the left, from 2010, sidesteps this issue. The more recent back label shows that the product is made in Latvia rather than Russia. Russia and Latvia are nextdoor neighbors, and were one and the same until Latvia regained its independence in 1991. Still, this is a big change and presents a tricky marketing challenge — that would seem to be tantamount to moving Jack Daniels production from Lynchburg to Los Angeles or Guadalajara. For such a big brand (with sales estimated near $2 billion per year) there has been surprisingly little press coverage of this issue. Back in 2006, Businessweek attempted to sort out this tale of international intrigue:
So what exactly is the row about this time? When the Russian government stripped S.P.I. of its right to the Stolichnaya brand in 2002, it also banned the company from exporting Stolichnaya vodka from Russia. That’s when S.P.I. responded by moving the bottling of Stolichnaya to Latvijas Balzams distillery in Latvia. Yet the Stolichnaya on sale in the U.S. continues to be labeled as “genuine Russian vodka.” S.P.I. and Allied Domecq testified in the U.S. court that the vodka continues to be produced in Russia, at distilleries in Kaliningrad and Tambov.
The 2010 approval also caught our eye because of the strange pairing of Baltic-Region flavored vodka with Hugh Hefner and his bunny.
On many labels, it can be difficult to draw the line. For example, it is tough to say whether this PimpnHo label (also by Weibel) goes too far.
But then again, it is fairly clear that Champortini went quite a bit too far.
It suggests Champagne but does not qualify to be labeled as Champagne. It suggests Port but does not qualify as Port. It sounds a lot like martini, but has none of the traditional martini ingredients. This puts the brand out in some rough waters, without the safe harbor of an approval before the crucial 2006 grandfather date set forth here.
Any one of these issues might have been enough to sink this brand, but putting all these issues together, it would be a great surprise if the brand did not sink. It apparently lasted from April 27, 2007 (the date of the first approval) until a little after February 20, 2008 (the date of the third and final approval, as above). There is no trace of this brand’s survival at the Champortini website shown on the label.
If you are lucky enough to have a wine approved before 2006, you can call it Port. But if it’s made outside Portugal and you don’t have an approval before 2006, you are out of luck and will have to find another name.
Schatz Farms went so far as to show a “USB port” and call it “USB” when foreclosed from simply calling their Lodi dessert wine “Port.” The label says the US:
signed an im____ant agreement with the European Union to protect ____ugal’s geographical indication of this type of wine. Our Unidentified Secret Brand is therefore no mystery wine. . . .
Kobalt refrained from calling their Napa Valley dessert wine “Port” and instead described it as “wine made in the same ‘old world tradition’ as that of the country to the west of Spain.” Another example is here: Not Starboard.
By contrast, for an example of a California wine “grandfathered” and therefore able to brandish the term Port, there is Portacinco Port. TTB approved it with this qualification:
Approved under the “Grandfather” Provision of the Agreement between the U.S. and the EC on Trade in Wine, by enacting the Tax Relief and Health Care Act of 2006, signed on 12/20/2006.
We never thought we’d see a TTB controversy make it into a big ad in the national media — let alone a full page ad in Time Magazine. The yellow ad is on page 69 of the December 29, 2008 “Person of the Year” double issue and it covers the entire page.
The French Office of Champagne is not at all pleased that some non-French wines qualify to be called Champagne, under US law. The ad says “Masquerading as Champagne … isn’t fair. … A legal loophole allows” some names to be misused.
In 2006, after many years of negotiations between the US and the European Union, and agreement, TTB set forth the current US rule in TTB Industry Circular 2006-1:
the U.S. made a commitment to seek to change the legal status of [terms like Champagne] to restrict their use solely to wines originating in the applicable EU member state, with certain exceptions. Because the IRC specifically defines semi-generic names, this law must be changed in order to restrict the usage of the names to wines originating in the EU. Assuming the law is so changed, the Agreement contains an exception to this rule. We refer to this exception as the “grandfather” provision. Under the “grandfather” provision, any person or his or her successor in interest may continue to use a semi-generic name or Retsina on a label of a wine not originating in the EU, provided the semi-generic name or Retsina is only used on labels for wine bearing the same brand name, or the brand name and the fanciful name, if any, that appear on a COLA that was issued prior to March 10, 2006.
E. & J. Gallo appears to have been very deft in navigating this elaborate path, to preserving the term Champagne on its top-selling brands such as Barefoot (above), Tott’s, Andre, and Ballatore. Box 19 of the Barefoot COLA shows that TTB grandfathered this brand.