128 WINE LAW of the consumer could not be ignored by Champagne Royer père et fils, who “deliberately chose to omit any element that could distinguish their marks from that of Royer Jean-Jacques”59. The same reasoning and assessment of the likelihood of confusion apply for identical toponyms designating different terroirs. Indeed, where a wine-grower has always used in good faith and without risk of confusion with the prior trademark of a place name, coexistence is possible, subject to the addition of another element – known in France as “privilège de tènement” (“tenement privilege”). In a famous case, the Court of Appeal in Bordeaux acknowledged the right of Scea Vignobles Guerin to use the toponym Petrus both in its commercial name and in its trademark, since the cadastral Petrus plots of land are included in its vineyard. Therefore, the Chateau Petrus Gaia trademark was considered valid in the absence of any likelihood of confusion with the trademarks registered by Château Petrus. It has been pointed out that, although the two signs apply to identical products, namely wines, the worldwide reputation of Château Petrus, producing wines of the controlled Do Pomerol, is in itself such as to avoid any risk of confusion in the mind of the consumer with a trademark applied to wines of the controlled Bordeaux Supérieur DO60. Accordant, the absence of likelihood of confusion and good faith are decisive. III.2.2. LEGITIMATE USE OF THE PRIOR TRADEMARK Use in good faith is also binding for the owner of the earlier mark, in particular where a new DO or GI is protected and where he wishes to oppose its trademark. Thus, use in good faith is an essential requirement for a trademark filed, registered or established by use before the date of protection of a DO or GI, to continue to be used and renewed notwithstanding the protection of a DO or GI, provided that no grounds for the trademark’s invalidity or revocation exist. This condition is required by article 102(2) of Regulation No 1308/2013, article 14(2) of Regulation No 1151/2012, article 36(2) of Regulation 2019/787 and, finally, article 13(1) of the Geneva Act of the Lisbon Agreement on AOs and GIs, adopted 20 May 2015. An identical requirement of use in good faith is found for trademarks filed before the enlargement of EUTM to new territories under article 209 EUTMR. According to recitals 22 and 23 of the EUTMR, “It follows from the principle of free movement of goods that it is essential that the proprietor of an EU trade mark not be 59 French Supreme Court, 16 October 2019, no. 17-20940 & Douai Court of Appeal, 16 March 2017. 60 Bordeaux Court of Appeal, 21 November 2005.
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