APALTA is an appellation of origin not a trademark, rules panellist

Chile

In Jose Rybertt y Cia Ltda v Montes SA, NIC Chile panellist Luis Felipe Claro Swinburn has dismissed Montes SA's opposition to the registration of 'vinosapalta.cl'. Claro Swinburn held that although Montes owns the FINCA DE APALTA mark, it was using it as an appellation of origin, which merely indicates that its wine is produced in the Apalta Valley in Chile.

Montes, a wine producer whose vineyards are located in the Apalta region of Chile, owns a registration for the mark FINCA DE APALTA for goods in Class 33 of the Nice Classification (alcoholic beverages). It filed an opposition with NIC Chile against Jose Rybertt y Cia's registration of the domain name 'vinosapalta.cl' on the grounds that it infringed its rights in the FINCA DE APALTA mark.

Claro Swinburn dismissed the opposition action and allowed the registration of the disputed domain name. He noted that, over the past few years, Montes has invested a lot of resources into promoting Apalta Valley wines. However, he held that Montes was using the Apalta name merely as an appellation of origin for its wine. Claro Swinburn pointed out that Montes is not the only wine producer located in the Apalta Valley and, therefore, it is not in a position to prevent other producers also based there from using the name Apalta as an appellation of origin for their wines. As there can be no exclusivity in the Apalta name, said Claro Swinburn, Jose Rybertt y Cia also had a right to use it and had not registered the domain name in bad faith.

It is perhaps interesting to note that the Apalta name has not as yet been officially recognized as an appellation of origin by the Chilean authorities. However, it is likely that it will be granted this status in the near future.

Paulina Bardon, Claro y Cia, Santiago

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