Battle for Waterford continues

The IPKat's friend Stephanie Bodoni tells him that the battle over control over the use of the word WATERFORD (see IPKat post here) is to be fought at a higher level, now that Waterford Crystal, the Irish maker of luxury glassware and china, is appealing to the European Court of Justice against the application by Assembled Investment Ltd (a South African winemaker)to register as a a Community trade mark the words WATERFORD STELLENBOSCH. Says Stephanie:
"The crystal maker, a unit of Waterford Wedgwood, has appealed against the decision of the Court of First Instance (CFI) in June that Assembled Investment Ltd's use of the word WATERFORD for wine and other alcohol was not likely to cause confusion among consumers".
This particular battle is also being fought in Ireland (where Waterford is the name of a local town) and the US. The CFI's view is that, since articles of glassware and wine are not similar goods, there is no likelihood of confusion. This decision reversed that of the Board of Appeal in 2004, which held that a likelihood of confusion existed, citing a high degree of similarity between the marks which can facilitate a finding of likelihood of confusion even where the parties' goods are not very similar at all. The Board of Appeal's decision had overturned that of the Opposition Division - which felt, as the CFI did, that there was insufficient similarity of goods.

For anyone following the progress of the appeal, it is Case C-398/07 Waterford Wedgwood v Assembled Investment Ltd . It may be a year or two before the decision is handed down.

The IPKat believes that more guidance is needed from the European Court of Justice as to whether, and when, goods that are manifestly different from another can be regarded as similar because they are so complementary to one another. Wine glasses and wine are entirely different in their physical qualities, yet they are frequently found together and, unless you are the sort of person who prefers to drink his wine out of a plastic cup, the chances are that you will use a wine glass. But does this complementary quality make goods similar for trade mark purposes? Merpel says, I wonder what the Community trade mark applicant would say if Wedgewood Waterford were to apply to register the trade mark STELLENBOSCH WATERFORD for its glass products?

History of glass-making here
History of wine-making here
More information on Waterford and Stellenbosch
Wine and cat's urine here, here and here
Battle for Waterford continues Battle for Waterford continues Reviewed by Jeremy on Monday, September 03, 2007 Rating: 5


  1. Groan......

    Jeremy, you really must not encourage further "guidance" from the European Courts.

    If it is recognised that the problem is too much guidance from these sources, and that the whole system needs to prevent, rather than encourage "another bite of the cherry type" appeals then there may be light at the end of the tunnel.

    Somehow however I do not think this will happen.

  2. I'd encourage any guidance - however arbitrary and devoid of reason it might be - if it created a substantially degree of stability and predictability than that which we have already. We're talking here about an application that was filed in 1999, the fate of which is still open to speculation and alternative outcomes nearly eight years later and with more litigation to come.

  3. To misquote a well-known phrase, if the answer is more guidance from the ECJ, we are asking the wrong question.

  4. But there are ways of asking for guidance. Alas, the process is difficult to manipulate on appeals from the CFI, but on references for preliminary rulings I'm sure it can be done: (i) ask your question, (ii) explain why you're asking that particular question and not another one, (iii) suggest what you think is the right answer and (iv) give a clear account of your reasoning for it, then (v) close your eyes and pray fervently that your reference doesn't coincide with bees which may be residing under the Advocate General's bonnet. The ECJ's work-load, the need for the ECJ to retain unanimity and the fact that your suggested answers represent the line of least resistance may just get you a statement that the law is exactly what you want to be.


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