Jose Cuervo Loses Bid To Block Trademark Registration For Il Corvo Wine

from the i'll-drink-to-that dept

When it comes to trademark disputes involving alcohol companies, we should all agree by now that things tend to get really, really silly. Too often a reversion to protectionism causes company lawyers to stretch the plain meaning of words on matters of similarity and the potential for customer confusion. The latest example of this comes to us from South Africa, where the company behind Jose Cuervo tequila attempted, and failed, to block the trademark registration for Il Corvo branded wine.

Tequila Cuervo SA de CV turned to the North Gauteng High Court in Pretoria for relief when Fabrication and Light Engineering CC – South Africa’s largest storage and construction equipment manufacturers – applied for the registration of the proposed Il Corvo trademark.

The tequila manufacturer, which owns the trademarks Cuervo and Jose Cuervo, as well as the raven depicted on some of their products, maintained the proposed Il Corvo mark was likely to deceive or cause confusion because of the mark’s similarity to their registered trademarks.

The court didn't buy the argument for several reasons. To start, wine and tequila might be said to be in the same or similar marketplaces, but it's more accurate to say they are in tangential markets. Both products might be sold in the same store, for instance, but nobody is going to accidentally buy a bottle of wine with the intention of buying tequila. It's something I have been arguing for years: the marketplace distinction for trademarks needs to be more nuanced than a marketplace designation for something like "alcoholic beverages."

Almost certainly more impactful was that nothing in the trade dress for the two companies or their products was similar. That's because Il Corvo wasn't trying to trade on Jose Cuervo's name at all; it was just a slightly similar name. And that name is ultimately what this was all about. The entire question is whether a wine that incorporated "Corvo" in its name would be confused for a tequila that incorporated "Cuervo" in its name.

The proposed Il Corvo trademark did not globally resemble Tequila Cuervo’s trademarks and were visually and conceptually different. The differences between the marks were stark, the judge said. He said although there was a similarity between Corvo and Cuervo, the overall impression given by the marks based on their distinctive and dominant components were not so similar that it would cause confusion. He said it was extremely unlikely that the notional consumer would know that “corvo” and “cuervo” both mean raven in different languages.

It's the kind of ruling I wish we saw more of stateside, taking into account the overall impression left with the consumer, rather than defaulting to rewarding protectionism and aggressive policing of a trademark.


Reader Comments

The First Word

Subscribe: RSS

View by: Time | Thread


  • identicon
    Anonymous Coward, 27 Jan 2017 @ 3:21pm

    Marketplace Designation

    I'm a little surprised some haven't tried claiming "consumer goods" as their market.

    reply to this | link to this | view in chronology ]

  • icon
    GristleMissile (profile), 27 Jan 2017 @ 4:03pm

    I'm pretty sure the whole Jose portion should be considered too. I mean, I can't count the number of times I've been visiting friends in Italy and accidentally asked them "Dov'è Jose bagno?"

    reply to this | link to this | view in chronology ]

  • icon
    bookwallah (profile), 28 Jan 2017 @ 7:37pm

    But you know how lawyers are

    Agreed, this is absurd. But one or two court cases decades ago apparently established (in law, or in lawyers' minds) the idea that a trademark holder must vigorously oppose *all* even trivial, stretch, or good-cause infringing uses, or risk later losing cases of serious trademark infringements, as if the trademark was effectively abandoned property. Hence all those stories of big corporations sending cease and desist letters to kids' lemonade stands. The company might not really care, but it wants documentation of efforts to protect the trademark.

    reply to this | link to this | view in chronology ]

  • identicon
    Edgar Allen Poe, 28 Jan 2017 @ 9:09pm

    Citó il corvo nunca más, mai più.

    https://www.youtube.com/watch?v=dVLUeXkzUjM

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 29 Jan 2017 @ 11:03am

    I guess you could say that Tequila Cuervo SA de CV got Dishonoured.

    reply to this | link to this | view in chronology ]

  • icon
    NaBUru38 (profile), 29 Jan 2017 @ 4:32pm

    "wine and tequila might be said to be in the same or similar marketplaces, but it's more accurate to say they are in tangential markets. Both products might be sold in the same store, for instance, but nobody is going to accidentally buy a bottle of wine with the intention of buying tequila.

    It's something I have been arguing for years: the marketplace distinction for trademarks needs to be more nuanced than a marketplace designation for something like alcoholic beverages."

    I disagree with that reasoning. Companies often produce different kinds of products, like Diageo, Coca Cola and Red Bull. And they may try to use the same brand for different products.

    If a customer sees a Pumpd energy drink and a Pumpd vodka, they may think they are from the same company.

    In this case, Tequika Cuervo sounds Mexican and Il Corvo sounds Italian.

    reply to this | link to this | view in chronology ]

  • icon
    Mason Wheeler (profile), 30 Jan 2017 @ 7:05am

    Alcohol makes people act stupid. News at 11!

    reply to this | link to this | view in chronology ]


Add Your Comment

Have a Techdirt Account? Sign in now. Want one? Register here
Get Techdirt’s Daily Email
Use markdown for basic formatting. HTML is no longer supported.
  Save me a cookie
Follow Techdirt
Techdirt Gear
Shop Now: Copying Is Not Theft
Advertisement
Report this ad  |  Hide Techdirt ads
Essential Reading
Techdirt Deals
Report this ad  |  Hide Techdirt ads
Techdirt Insider Chat
Advertisement
Report this ad  |  Hide Techdirt ads
Recent Stories
Advertisement
Report this ad  |  Hide Techdirt ads

Close

Email This

This feature is only available to registered users. Register or sign in to use it.