Opinions
Old farmers’ faces, new decisions: EUIPO Board of Appeal rules on wine trademarks.
Another interesting decision of the EUIPO Board of Appeal about wines and farmers’ faces!
On 15 March 2024, the Fifth Board of Appeal upheld the Opposition Division’s decision according to which there was no likely of confusion between a trademark consisting solely of a photograph of the face of an elderly man in traditional farmer’s clothing registered for Wines and a later trademark also consisting of a photographic portrait of an elderly man in farmer’s clothing, with certain word elements including the name ‘Don Antonio’ and that of the proprietor name, also registered for Wines in Class 33 and other services.
A quick rundown of the facts
By an application filed in December 2020, Italian winery Tenuta Ulisse Società Agricola s.n.c. sought to register the trademark consisting of the farmer’s portrait shown below – with some other denominative elements – for Wines in Class 33.
Application filed by Tenuta Ulisse Società Agricola s.n.c
In April 2021, the Spanish winery Vintae Luxury Wine Specialists, S.L.U. filed an opposition to the registration of this trademark application, basing its action on the following European Union earlier trademark – depicting exclusively the face of this farmer – registered for Wines in Class 33 and other services. This trademark was used on the labels of their wines.
Prior trademark registered by Vintae Luxury Wine Specialists, S.L.U.
In November 2022, the Opposition Division rejected the opposition on the grounds that there was no likelihood of confusion between the trademark application and the prior trademark of Vintae Luxury Wine Specialists, S.L.U and that it had not been shown that the earlier mark enjoyed a reputation.
Highlights: the addition of the person’s name to the face transforms the portrayed man into a brand ambassador
According to the Board, the premise of the decision is that the earlier mark is protected for the specific image for which it was filed and registered, rather than for the abstract idea or notion of a portrait of an old man in itself used as a trademark.
Moreover, the Board acknowledged that the earlier sign was distinctive, because it was not related to the product i.e. wine, but that the distinctiveness of the trademark was only average, because it held that insufficient evidence of ‘enhanced distinctiveness through use’ had been given, also because some of the evidence offered referred to the United Kingdom, whereas that territory can no longer be taken into account due to Brexit.
Thus, the Board ruled out the likely of confusion, because of the distinguishable and memorable differences between the figures of the two elderly men and the presence in the second mark of a person’s name that misleads the perception of the portrait in question representing completely distinct persons and even ‘transforms the man from a mere subject of a photograph into a brand ambassador’.
Food (not wine!) for thought on the registration practice of the Office
A reflection should be made not so much on the reasons of the Board, but rather on the practice of the Office to register ab origine trademarks consisting exclusively of faces of people.
We recall that the function of a trademark is, among others, to serve as a link between the goods and services and the company marketing them. So, no matter how characterizing it may be or pointing to a possible name to that face and regardless the fact that one of the writers of this alert is most likely suffering from prosopagnosia, i.e. inability to recognize faces, are we sure that a face has sufficient distinctiveness to be registered as a trademark?
We will see what this Office registration practice will lead to and what new business strategies can be devised keeping this possibility in mind, as entrepreneurs and as IP professionals.
This newsletter is for the sole purpose of providing updates and general information and is not intended as legal advice on any particular or specific issue.
For clarifications or information, please contact the authors or your reference professional in the Intellectual Property area at our Firm.
Niccolò Ferretti, Partner
E: n.ferretti@nmlex.it
T.: +39 026575181
Valentina D’Adda, Trainee
E: v.dadda@nmlex.it
T.: +39 026575181
Publish date: