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