PROTECTION OF WINE NAMES BY TRADEMARK LAW 127 third party. It should further permit the use of descriptive or non-distinctive signs or indications in general.”. Such will was expressed through the adoption of the article 14 EUTMR, which provides: “1. An EU trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade: (a) the name or address of the third party, where that third party is a natural person; (b) signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services; (c) the EU trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of that trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts. 2. Paragraph 1 shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters.” (emphasis added). In the case of reputed trademarks, its use is prohibited, provided the sign is used without due cause (art. 9 EUTMR). Therefore, if the third party has a legitimate cause to the use of the prior reputed trademark, its use would be licit. In the wine sector, these limitations are meant to apply and will lead to coexistence, provided the use is legitimate and not likely to cause confusion. Most of the time, the coexistence occurs in the case of patronymic or geographical homonymy. As mentioned before, wine names often include a patronymic name, which corresponds to the name of the current or former owner of the winery, or the tenant name, where the wine is produced. Any bearer of the family name is entitled to use it in business life. A conflict is therefore likely to arise when two individuals, from a common ancestor, operate a winery each under their name. The use or registration of a second trademark is then authorised, provided that there is no likelihood of confusion with the first trademark. For this, the addition of an element, such as the first name, is often considered sufficient. As an example, in a conflict between two champagne-producing companies using the same surname inherited from a common ancestor: the company Royer Jean-Jacques, with the trademark JeanJacques and Sébastien Royer (registered in 2002), and the company Champagne Royer père et fils (father and son), with the trademarks Royer & Cie and Royer registered in 2010 and 2011, as well as Royer père et fils registered in 2005 in use since 1969 as an earlier corporate name and trade name, as well as domain names all composed of the name Royer. It has been ruled that the 2002 trademark “Jean-Jacques and Sébastien Royer” was registered in good faith since it contains first names; however, the 2010 and 2011 trademarks Royer & Cie and Royer are likely to be confused with the 2002 trademark and are fraudulent since the prior existence of Jean-Jacques and Sébastien Royer and the risk of confusion in the mind
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