On April 13, 2015, the parties came together in the Federal Court of Australia for their final day of legal battle. The fight had been a drawn out one, a long three-year journey. In front of Justice Jonathan Beach, to his left, sat a woman in her 40s, back ramrod straight, eyes ahead, with a short blonde haircut teased and lacquered, a sight familiar to wine lovers who tuned in to Australian morning television.
Wine educator and writer Rachel Jayne Powell had loved Champagne so much that she had turned her long-time nickname, ‘Champagne Jayne’, into her business name in 2003. Educating and entertaining people about the world’s most exclusive bubble had been her life. But now she was being asked to explain herself. By taking the name of her favourite wine, had she misled and deceived wine drinkers in her behaviour, and in her posts on social media, when she mentioned or promoted non-Champagne sparkling wines?
To the right of Justice Beach sat a legal team arguing that she had done just that. The small pack of barristers led by Philip Crutchfield, Queen’s Counsel, represented the Comité Interprofessionnel du Vin de Champagne (CIVC) – now known as Comité Champagne – a powerful group of growers, producers and merchants charged with protecting the good name of Champagne. To its makers, it’s a highly potent symbol of prestige, luxury, as intrinsically French as a baguette or beret.
Should anyone doubt how passionately Comité Champagne will protect the Champagne name, the director of communications, Thibaut Le Mailloux, sets it out: “Comité Champagne opposes any misappropriation of Champagne by principle, regardless of the nature and size of the infringer.”
Jayne Powell is not the first to feel the wrath of such a powerful wine force. In Australia and in England – where she was born – news of the court case made her an international cause célèbre among the wine media, Powell slipping easily into the role of David to the CIVC’s bullying Goliath. Wine commentators smelt a comeuppance for the French. But was it justified?
How it began
The expensive legal bonfire was lit in August 2012, when Jayne Powell’s application to IP Australia (the administrator of intellectual property rights within the country) to register Champagne Jayne as a trademark was accepted. In November, the (then) CIVC, through its Australian lawyers, issued a letter of demand: Cease using the name Champagne Jayne or else. She declined.
The Federal Court in Melbourne beckoned. So did possible bankruptcy for Ms Powell. No wine group in the world is more diligent or more litigious in protecting its image than the winemakers of Champagne. For decades they have hunted down producers passing off their wines as Champagne and those using the Champagne name in vain for a personal or business advantage.
In 1960 it was Spanish sparkling wine producer Perelada, and its use of the name Spanish Champagne, that caught the eye of the Champenois. Perelada lost the ensuing battle. Champagne took on a fight of epic proportions in 1993 when it prevented Yves Saint Laurent from trademarking one of its perfumes as Champagne. The fashion icon, who had reportedly already spent $17m in advertising, lost.
Nor is distance an obstacle for the lawyers employed by the CIVC. In 2001, a wine producer on the island of Tasmania in the Southern Ocean was faxed a ‘please explain’ letter from CIVC’s Australian lawyers. The colour of his sparkling wine label was considered too close to the trademarked yellow-orange label of Veuve Clicquot. Stefano Lubiana Wines chose to change the colour of its labels rather than engage in an expensive court case. In 2014, the CIVC took a French company selling cigarette papers to court. The company, Royal Distribution Tabac Distrib Nord had been selling rolling papers under the name Crystal Champs, and using an image of a Champagne bottle and flute in its packaging. The Champenois won the case and were awarded damages. This latter legal battle possibly signals renewed vigour in the protection of the Champagne name by taking the fight to products beyond those traditionally associated with the sparkling wine.
Today, not only the Champenois, but also every major wine producer throughout the world keeps constant vigil in order to protect its brand, its reputation. Some boast teams of in-house lawyers trawling magazines, newspapers, books and the internet for likely offenders – those foolish enough to advertise, or to have their transgressions written about by journalists.
Winemakers might tell themselves that they are being unfairly scrutinised and that the wine world is becoming more litigious, but that would be to miss the point.
Decades involved in developing, promoting and polishing a wine brand are not to be easily given away. Wine producers, particularly those who export, or have an international reputation for quality, can today find themselves ambushed by an astonishing range of underhanded tactics, some quite sophisticated, from “passing off” copycats through to cyber squatters, counterfeiters and opportunistic wine distributors registering wine businesses in emerging markets.
“It’s a question of dilution,” says Australian-based lawyer James Omond of Omond & Co., who provides specialist legal services to the wine industry. “You might not think it’s a problem that one or two people start using your protected term, but then all of a sudden lots of people are using it, and then you lose the right to stop them using it,” he says. “Having ensured protection in the Treaty [the Australia – European Community Agreement on Trade in Wine], the Champagne body needs to make sure there is no sort of backsliding in allowing people to use the term on anything other than sparkling wine that has been produced in the Champagne district.”
Abuses are legion
The internet has complicated things. The US-based Internet Corporation for Assigned Names and Numbers (ICANN), which hands out internet domains such as .com and .gov, recently created wine specific domains: .wine, .vin, .vino. Wine groups in the US and across Europe remain nonplussed. They say there aren’t enough safeguards in place to prevent abuse by domain pirates who can register the names of wine producers or regions such as the Napa Valley and then on-sell to the highest bidder or trade off them. “We feel that we are witnessing the establishment of a globally organised extortion system,” said Dr Riccardo Ricci Curbastro, president of the European Federation of Origin Wines, in a statement after the ICANN plans were unveiled in July 2014.
While wine industry bodies debated the small print – some commentators have argued that the reputation and history of a wine region cannot belong to any one group or maker – entrepreneurial investors like California-based Domains.wine have gone ahead and developed a portfolio of almost 1,000 .wine and .vin domains. “We have names for everyone,” boasted Domains.wine co-founder James Bradley Williams earlier this year in a company press release, citing domains already developed such as Champagne.wine, Port.wine, Sherry.wine, and regional domains LosOlivos.wine and Malibu.wine.
Log on to Champagne.wine and the site transfers to a public notice presented by the Comité Champagne informing visitors that after three years of negotiation an agreement has been reached between the wine industry and companies who will use .wine and .vin, ensuring the protection of intellectual property rights, in particular “appellations of origin” such as Champagne.
Control over domain names is but one area of concern in the war on a producer’s or region’s brand. A wine producer in California, Germany or Australia sends off samples of wine to China, in the hope of landing a distributor. It’s a mistake. Trademark lawyers impress upon their clients that the moment samples land in China, someone will invariably lodge that trademark.
Then there’s the question of counterfeiting. Some estimate the number of Chinese involved in the counterfeiting of wine runs into the millions, including those who manufacture wine bottles, wine labels, as well as the wines. “If it all stopped overnight there would be a major unemployment problem,” suggests one trademark and intellectual property lawyer, who regularly represents wine companies in China. “I tell clients in the wine sector who are looking to export, that if you are looking to export anywhere you’ve got to register your trademarks in China, because that will be the first place where your marks will be ripped off,” he says.
End game
It is not unusual to receive a cease and desist letter from the Melbourne law firm Corrs Chambers Westgarth, acting on behalf of its long-time client, the CIVC, citing an infraction against the good name of the Champagne region and its makers.
What is unusual is when someone fights the claim and goes to court. Jayne Powell remembers the letter. Her book, Great, Grand & Famous Champagnes: Behind the Bubbles, had been awarded Gourmand’s 2011 Best French Wine Book (Australia) in Paris, and she had been named Harper’s 2012 International Champagne Educator of the Year. In September 2012 she became a Dame Chevalier de l’Ordre des Cotes Coteaux de Champagne, a group not officially connected with the CIVC. In August 2012, her application to have Champagne Jayne trademarked by IP Australia was accepted. Life was very good indeed until opposition to the trademark was lodged three months later by lawyers for the CIVC.
The first letter of demand came the following May. “They pretty much wanted to shut down my brand altogether,” Powell recalls. “It was literally about three weeks after I had been inducted [as a Dame Chevalier] that they launched the trademark opposition, and I said to myself, ‘Well, come on, I have won all these awards. I’ve been doing this for 10 years, and the CIVC would ring me because they would help me with my trips in Champagne,’ so I thought it was a bit ridiculous to suddenly turn around and say I couldn’t use the name anymore. I defended myself.”
A cool change came into what had been a mutually rewarding relationship when Australian lawyers for the Champenois discovered she was promoting other sparkling wines – such as Australia’s Arras and England’s Nyetimber – in addition to Champagne, in her posts on social media, in television appearances, and in her presentations. To the French, who had spent millions protecting their brand and educating drinkers to understand that only Champagne comes from the Champagne region, she was confusing a large section of her audience.
Powell recalls seeing other trademarked names freely using the word Champagne, including “Champagne taste on a beer budget” and “Champagne Poppers”. Were they also being sent the letter?
The judge, Justice John Middleton, made it clear during the first Melbourne court hearing, that no one could be prevented from having Champagne in their name. After a failed mediation attempt, there was a second court hearing in December 2014, heard by Justice Beach. It was clear that the case would fail or succeed in three key areas. Had Champagne Jayne engaged in misleading or deceptive conduct by: 1. Claiming an affiliation with Champagne. 2. By using and promoting non-Champagne sparkling wines. 3. By promoting non-Champagne wines across her various social media platforms.
In October 2015, Justice Beach delivered his judgement. Powell could keep Champagne Jayne as her business name, her associated website, and her Champagne Jayne social media platforms, but she could no longer portray herself as a Champagne ‘ambassador’ or as having any official affiliation with Champagne. Nor could she continue to mention non-Champagne sparkling wines on social media without an accompanying disclaimer. She has since adopted the phrase #notachampagnewine to denote wines not sourced from the Champagne region in France. “The CIVC has succeeded on limited aspects only of its broader case,” found Justice Beach. Costs were not awarded, leading one trademark lawyer to declare it a “massive win” for Champagne Jayne.
Today, Powell is seeking to get her life, her business, and her finances back on track. Her trademark application, which sparked the legal chain of events leading to the Federal Court, still stands and is being opposed. Legal fees ate into her savings and she did not work during the three-year duration of legal un-pleasantries. The trial and legal costs for the CIVC could have run up to A$500,000.00 ($383,000.00), while Powell’s costs would only have been marginally less.
Was the Comité Champagne right in pursuing Powell? Stephen Stern of Corrs Chambers Westgarth said he could not comment unless invited to do so by his client. His client, Comité Champagne, did make an official statement on October 21, 2015. In part it read: “The Comité Champagne, after vain attempts at mediation with Ms Powell, was forced to pursue Ms Powell before the Australian courts. The Comité Champagne handles approximately 1,200 cases every year relating to the protection of the Champagne name. More than 95% of all matters are resolved out of court.”
But make no mistake, go to court they will.
Five rules to protect your brand:
1. Register your trademark
Registering a business, company or domain name does not automatically give someone the right to use that name. Trademark registration is required. In legal circles it is considered both “a shield and a sword”. That is, you can use it to sue others and it shields your business because, generally, no one can use that name later, infringing your rights. Trademark registration can offer up to 95% protection. Without it, protection can drop to around 10%.
2. Choose a protectable name
Choose a name that can’t easily be copied. Avoid using the name of the geographical region where your business is located, or local landmarks. Avoid using surnames because others can use the same name. The best name is fictional/a figment of your imagination because few will have a good reason for using it. Trademark lawyers use the example: “North Pole for bananas” as a classic example of a protectable business name, even though it includes a region.
3. Register your trademark in important export markets
Wine producers with significant exports into other countries should consider registering their trademarks in those countries. Generally, it’s large wine producers who follow this course of action as the application process in some countries can be expensive.
4. Take advantage of the Madrid Protocol
The Madrid Protocol, established in 1991, is an international treaty that allows a trademark holder to register in any of the 88 countries now party to the Protocol. A producer can seek registration in any of the countries by filling out a single application, making the process easier and cheaper than it once was.
5. Your reputation can be your weapon
If you want to sue for ‘passing off’ or the infringement of an unregistered or common law trademark, you will have to establish that you have a reputation to uphold and you will be required to prove what damage you have suffered as a result of the infringement.
