According to very romantic French legend, in the 17th century, Dom Pierre Perignon first crafted champagne and called to his fellow Benedictine monks “Venez vite! Je bois des etoiles!” (“Come quickly! I am drinking stars!”)
Some 300 years later, the France-based Comite Interprofessionnel du Vin de Champagne, which protects the interests of wine producers and growers from the Champagne region, is known for being very assertive when trying to protect the indicator “Champagne” from misappropriation.
The Comite has recently set its sights on wine expert and author Rachel Jayne Powell, who is more famous in Australia for trading under under the name “Champagne Jayne.”
The Comite Interprofessionnel du Vin de Champagne has commenced proceedings in the Australian Federal Court to force Powell to cease all activities connected to the “Champagne Jayne” brand.
The litigation reportedly seeks remedies requiring a withdrawal of a pending Australian trade mark registration for “CHAMPAGNE JAYNE”, decommissioning of her website and accompanying social media accounts under the brand, destroying all pamphlets and brochures that bear the “CHAMPAGNE JAYNE” brand, as well as paying unspecified damages and costs.
Here is a copy of an extract of the pending trade mark from the online Australian Trade Mark Registry records:
The Comite alleges that Powell has tarnished the brand and deceived consumers because as she has promoted wines that are not from the Champagne region. The claim is that her use of the “Champagne” name could mislead readers or audiences that the products were endorsed by the Champagne industry.
The court documents allege that “The conduct of [Ms Powell] lessens the distinctiveness of and the goodwill in the name of champagne in Australia . . . and therefore damages the goodwill of the champagne sector.”
Under the brand “CHAMPAGNE JAYNE”, Powell holds events such as wine tastings, wine tours, and writes various materials (books, pamphlets, brochures) related to the wine industry.
Powell has maintained in the media that her palette is unbiased and unrestricted by any brand allegiance, and has defended herself by stating that featuring wines not from the Champagne region in her activities is meant only to compare them with the French version.
The matter has been adjourned from a three day hearing in December 2014 in Melbourne’s Federal Court before Justice Beach, until 10 March 2015.
The Comite’s assertion of rights in Australia dates back to 1981. In 1981 the Comite brought litigation for misleading and deceptive conduct against N.L. Burton Pty. Limited T/as Freixenet Spanish Champagne Distributors and Garland Farwagi & Partners Pty. Ltd for selling Spanish wine under the guise of “champagne”.
The Comite then argued that, “they do not seek to restrict the use of the word ” champagne ” by Australian manufacturers manufacturing wine by the “methode champenoise” but where the wine is imported they claim the right to prohibit the use of the word ” champagne ” in association with that wine unless the wine has been made by the “methode champenoise” in what they call the ” Champagne district” in France.”
But the judge rejected this on the basis that “”champagne “ and “imported champagne ” are descriptive words.”
In 1993 Australia entered into an trade agreement with the European Union which led to the establishment of the Australian Wine and Brandy Corporation Amendment Act 1993 (Cth) (“AWBC Act”). This legislation manifested Australia’s agreement to relinquish the use of certain EU wine terms including beaujolais, chianti and frascati in exchange for greater access to the EU market. This lead in turn to terms such as champagne, sherry, port and burgundy being phased out of use by Australian wine makers. (For an entertaining article with more on this, refer to this page.)
One of the things which is prohibited by the AWBC Act is for Australian wine producers to say that their Australian wines are manufactured by “Methode Champenoise” (“the champagne method”). This has led to Tasmania sparkling wine producer Jansz adopting the cheeky tagline, “Methode Tasmanoise” (“the Tasmanian method.”)
The Comite have also been successful in pursuing passing off claims in New Zealand and the United Kingdom – see Comite Interprofessionnel du Vin de Champagne v Wineworths Group Limited [1991] 2 NZLR 432, and Taittinger and others v Allbev Ltd and others [1994] All ER 75.
(As an aside, in 1996, another Comite, this time the Comite Interprofessionnel des Vins Cotes de Provence, more-or-less successfully brought a claim for infringement of the AWBC Act in the case of Comite Interprofessionnel des Vins Cotes de Provence & Anor v Stuart Alexander Bryce & Anor [1996] FCA 742. In this case the respondents were selling wine under the name “La Provence”. The Provence region of France lies on the Mediterranean coast, east of the Rhône river and in the French Departments of Var, Alpes- Maritimes, Bouches-du-Rhône, Vaucluse and Alpes de Haut- Provence. But the respondents had been selling wine under the brand La Provence since 1989, and the vineyard itself, La Provence Vineyards, had at that stage been in existence for 39 years, established by a Frenchman from the Provence region. The Court said,
“Thus Provence is not only a region in the ordinary meaning of the word, but is well (and favourably) known as a wine producing region. “Provence” is therefore a word used in the description and presentation of wine to indicate the region in which it originated and thus a “geographical indication” within the meaning of the Act…. I find therefore that wine sold in bottles bearing the respondents’ labels would be sold with a false description and presentation within the meaning of s 40C(1) by reason of the inclusion on the labels of the word “Provence”, which is a “registered geographical indication”. It is common ground that the respondents’ wine did not originate in Provence.”
The Court went on to find that the respondents did not contravene s 40C(1) of the Act because they did not knowingly sell their wine with that false description and presentation – but having been put on notice, would thereafter knowingly be involved in the prohibited sale.)
Knowing of my interest in this topic, someone once bought me a bottle of “Le Mongrel Champers” (“Champers” being an Australian diminutive term for “champagne”) produced in Margaret River, almost certainly in breach of the AWBC Act. It gathers dust on my shelf at work. Here is a photo:
The mainstream press has been reported on the CHAMPAGNE JAYNE matter, slyly deriding the merits of this case. But I am not optimistic about Rachel Powell’s prospects of success, despite:
a. a respectable argument that the word “champagne” is not being used as a geographic indicator; and
b. “Champagne” at least in the Australian vernacular being infrequently used as an adjective to describe things of high quality (I recall at least one TV personality sarcastically describing a lame pun as “champagne comedy”).
If Ms Powell was using the brand to talk about, say, cars, then the association with the region wears very thin.
But in relation to wine, the use of the term has come a long way from 1981. By using the word “champagne” to talk about wines, there is a suggestion of an association: that the wines under discussion are endorsed by or affiliated with or associated with the Champagne region.
Drinkers of Australian sparkling wine might know that the French Champagne house Moet & Chandon have an Australian brand of sparkling wine produced under the brand “Chandon”. Would they think that the other Australian sparkling wines scrutinised by Champagne Jayne also have some sort of similar association?
More difficult for the Comite is the issue of quantifying the damage to the goodwill of the brand. Justice French (as he was then) in Paramount Pictures Corporation v Hasluck [2006] FCA 1431 (a matter in which I was counsel for the applicants), considered the issue of compensatory damages for trade mark infringement. In that case it was assessed by way of:
a. Loss of sales
b. Loss through devaluation of their product
c. Loss through damage to their reputation.
In relation to loss of sales French J noted the following:
I would add the cautionary observation in Kerly at 18-146:
‘It is important to note that in assessing damages for lost sales on a compensatory basis, it will be necessary for the court to determine what proportion of the defendant’s customers have been confused. The claimant is not entitled to damages for sales to persons who have not been misled, since he has suffered no loss in respect of them, and, arguably, no actionable wrong has been committed in respect of sales to them. If he were to recover damages in relation to such persons, he would be over-compensated. This principle distinguishes passing-off and trade mark infringement from other intellectual property proceedings such as those for patent infringement, where all the defendant’s activities of a given kind infringe.’
Trying to ascertain which of Ms Powell’s customers had been confused would be no easy task. It is also hard to imagine which of her customers would be willing to participate in a survey to determine their confusion.
In respect of loss through devaluation, French J noted:
“…absent evidence of some competitive response by the applicants, the error in assessing changes in the value of a product by reference to infringement may be greater than the value shift itself.”
It is remote that the success of the brand “CHAMPAGNE JAYNE”, a business described as having a $100000 a year revenue, compared to the champagne industry’s global sales in 2012 of $5.86 billion (in Australia in 2011 the industry is reported to have sold 3.5 million bottles), would have had any impact upon the price of champagne. There would be no value shift caused by the CHAMPAGNE JAYNE brand.
Evidence of loss of damage to reputation is even more difficult to assess – French J said a “rigorous and principled approached is required before damages under this head are awarded.”
So it may be that even if the Comite is successful in getting an injunction, their entitlement to damages may not be more than nominal damages, if that.
Still, this is perhaps an effort by the Comite to change the use of language in Australia, away from any other meanings of the word “champagne” to one which strictly means wines which originate from that region. This strategy is hardly new for geographical indicator associations: the manufacturers of Parma ham in Italy have been busy getting meat producers to stop describing their ham as “Parma ham” if it does not originate from the Parma region, asserting that “Parma” is not a generic term.
Assuming the matter does not settle, I’ll report on the judgment in due course.