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.