In a decision dated 7 May 2019, the Paris Court of Appeal put an end to a legal saga that started in 2010 between DOMAINE DE JOUANDA on the one side and FERMIÈRE DU CHÂTEAU and the GFA DES DOMAINES DE SAINT-JULIEN MEDOC on the other.
Several members of the De Poyferré family (the DE POYFERRÉ FAMILY) own a wine estate named the DOMAINE DE JOUANDA, located in the Landes region in France.
The wine estate markets Armagnacs under the French word trade mark BARON DE POYFERRÉ No. 013100980 filed on 14 May 2001 and registered for goods in classes 31, 32, 40 and 33 including 'Alcoholic beverages (except beer), designations Armagnac, Bas-Armagnac, Cognac, Brandy, Floc de Gascogne; wines; other alcoholic preparations; fruit in alcohol'.
FERMIÈRE DU CHÂTEAU and the GFA DES DOMAINES DE SAINT-JULIEN MEDOC (CHÂTEAU LÉOVILLE POYFERRÉ) market wine under the French word and logo trade mark CHÂTEAU LÉOVILLE POYFERRÉ No. 1233641 filed on 19 April 1983 and registered for the following class 33 goods: 'wines and eaux-de-vie with a registered designation of origin from the estate exactly named Château Léoville Poyferré'.
This trade mark is represented as follows:
On 31 March 2006, CHÂTEAU LÉOVILLE POYFERRÉ filed two French word trade marks for PAVILLON DE POYFERRÉ and LES CONTES DE POYFERRÉ.
The DE POYFERRÉ FAMILY filed an action against CHÂTEAU LÉOVILLE POYFERRÉ for trade mark infringement and a violation of the family name "De Poyferré".
CHÂTEAU LÉOVILLE POYFERRÉ filed a counterclaim to obtain the cancellation of the trade mark BARON DE POYFERRÉ invoked, claiming that
- it infringed their earlier trade mark CHÂTEAU LÉOVILLE POYFERRÉ
- it was deceptive as to the geographical origin of the designated products and as to a specific quality related to an official distinction of "Second Cru Classé Saint-Julien"
- it was contrary to public order, as it constitutes indirect advertising in favor of an alcoholic beverage.
On 16 December 2010, the Paris Court of first instance rejected this counterclaim and granted the DE POYFERRÉ FAMILY’s claims, acknowledging the trade mark infringement as well as the violation of the family name. On 4 July 2012, the Paris Court of Appeal confirmed this decision.
However, rather than considering that the respondent did not infringe the appellant’s trade mark CHÂTEAU LÉOVILLE POYFERRÉ (in view of the absence of a likelihood of confusion), the appellate judges acknowledged the extinction of the appellant’s rights due to acquiescence. In other words, the use of the trade mark BARON DE POYFERRÉ has been tolerated for more than 5 successive years by CHÂTEAU LÉOVILLE POYFERRÉ.
On 13 November 2013, the French Supreme Court (Cour de Cassation) quashed this decision, except regarding the violation of the family name "De Poyferré".
The case was referred back to the Paris Court of Appeal (composed differently), which confirmed the decision handed down by the first Paris Court of Appeal on 6 February 2015.
However, unlike the first decision of the appellate judges, the Court of Appeal considered that the DE POYFERRÉ FAMILY did not infringe the CHÂTEAU LÉOVILLE POYFERRÉ’s rights because of a lack of likelihood of confusion, rather than for acquiescence.
On 15 March 2017, the Cour de Cassation once again quashed the decision but only regarding the rejection of the counterclaims filed by CHÂTEAU LÉOVILLE POYFERRÉ. The case was referred back to the Paris Court of Appeal (once again, composed differently), which handed down its decision on 7 May 2019.
Firstly, the appellate judges acknowledged the validity of the trade mark BARON DE POYFERRÉ, composed of the title "baron" and of the family name "De Poyferré".
They considered that it was not deceptive as "
the sign ‘POYFERRÉ’ has enjoyed a certain reputation in the field of Armagnacs for many years
", as well as in relation to a French family name. Furthermore, the CHÂTEAU LÉOVILLE POYFERRÉ’s trade mark benefits from a reputation but only to the extent that it includes "LEOVILLE", which relates to the wine estate.
Thus, the Court of Appeal concluded that
"the contested trade mark 'BARON DE POYFERRÉ', which neither reproduces the term 'LÉOVILLE' under which the wine was ranked, nor the name ‘Château LÉOVILLE’, does not include any element likely to deceive the average consumer of the products concerned".
The appellate judges stated that the average consumer wishing to buy an Armagnac bottle bearing the trade mark "BARON DE POYFERRÉ" from the JOUANDA estate will not make a connection with the Saint-Julien wine from the Château LÉOVILLE POYFERRÉ estate marketed under a word and logo trade mark including the same denomination.
Furthermore, the average consumer will not be deceived into believing that the products marketed under the BARON DE POYFERRÉ brand constitute by-products of the Château LÉOVILLE POYFERRÉ. The Court indicated that the trade mark "BARON DE POYFERRÉ" was limited to exclude wines, limiting confusion.
The Court further ruled that the trade mark BARON DE POYFERRÉ is not contrary to public order, as the filing of a trade mark does not constitute an act of indirect advertising in favor of an alcoholic beverage, in accordance with Article L. 3323-3 of the Public Health Code.
Secondly, the Paris Court of Appeal held that the concept of acquiescence was not applicable in this case, as the DE POYFERRÉ FAMILY did not show that CHÂTEAU LÉOVILLE POYFERRÉ had an actual knowledge of the filing and the use of the trade mark BARON DE POYFERRÉ.
Thirdly, the Court held that there was no infringement of the trade mark CHÂTEAU LÉOVILLE POYFERRÉ in view of the lack of likelihood of confusion between this sign and BARON DE POYFERRÉ.
With respect to the goods at issue (as they were initially filed), the Court held that there were similar regardless of the fact that:
- the registered designations of origin designated by the trade mark BARON DE POYFERRÉ come from a territory that is distinct from the one in which the Saint-Julien wine is produced
- the wines designated by the earlier trade mark are necessarily distinct from the ones coming from another wine region.
Indeed, the judges considered that "the average consumer of the products concerned is not necessarily informed of these differences and does not systematically value the grape variety or even the estate from which the wine comes".
However, the Court held that the mere presence of the term "POYFERRÉ" in the sign BARON DE POYFERRÉ is not sufficient to create a likelihood of confusion in view of the visual, phonetic and conceptual differences between the signs.
In particular, it was not shown that the term "POYFERRÉ" was more important than the term "LÉOVILLE" nor that the trade mark CHÂTEAU LÉOVILLE POYFERRÉ benefits from a reputation due to the term "POYFERRÉ".
In addition to reinforcing the main principles of trade mark law, this decision should provide amusement for Saint-Julien wine lovers with a passion for Pavillion de Poyferré and Les Contes de Poyferré wines.
Inès Tribouillet and Marc Schuler
Case Ref: Paris Court of Appeal–7 May 2019 – Case No. 17/09860 – "SOCIETÉ FERMIÈRE DU CHÂTEAU LÉOVILLE POYFERRÉ and GFA DES DOMAINES DE SAINT JULIEN vs Consorts De Poyferré"
