Golden Gate marks cancelled on grounds of non-use

Sweden
In Vin & Sprit AB v Golden State Vintners (Case T 10414/07, April 28 2009), the Stockholm District Court has dealt yet another blow to Vin & Sprit AB, the maker of Absolut Vodka.

The ongoing battle between Vin & Sprit and Golden State Vintners (GSV) involved two trademarks depicting the Golden Gate bridge in combination with the words 'California White' and 'California Red'.

GSV, one of the leading wine producers in California, began to deliver wine to Vin & Sprit at the beginning of the 1990s. The wine was marketed and sold under the name California White and California Red, and became a top-selling wine brand in Sweden. In 1999 Vin & Sprit registered the trademarks for its wine.

In 2007 GSV sued Vin & Sprit under the Swedish Trademark Act. GSV claimed that the registrations for the two trademarks featuring the Golden Gate bridge should be cancelled on the grounds that Vin & Sprit had stopped using them. GSV also claimed that the registration of the marks was detrimental to it because:
  • they contained an image of the Golden Gate bridge, in which GSV had rights; and
  • they included words that GSV had an interest in using in its activities in Sweden.
To decide whether the trademarks should be cancelled, the Stockholm District Court had to determine whether:

  • the registration of the marks was detrimental to GSV; and
  • the marks had been put to genuine use in relation to the goods for which they were registered.
The court ruled in favour of GSV on both claims. In particular, with regard to the claim of non-use, the court found that the marks as registered represented a bridge in black and white, while the marks as used were in colour. In addition, the bridge was seen from a different angle in the marks as registered and the marks as used.

The court found that these differences were sufficient to establish that the marks had been altered to such an extent that the overall impression conveyed by the marks as registered was completely different to that created by the marks as used. Therefore, the court concluded that the marks had not been used for an uninterrupted period of five years, as required by Article 25(a) of the act, and ordered the cancellation of the marks. Vin & Sprit argued that the trademarks had been established through use, but the court disagreed.

This is the third time that Vin & Sprit, which was acquired by Pernod Ricard in 2008, has lost in proceedings involving the Golden Gate marks. In the previous proceedings, GSV claimed that Vin & Sprit had breached an agreement between the parties when it registered the trademarks and that it should pay damages to GSV.

The decision has now been appealed.
 
Tom Kronhöffer and Victor Holmberg, MAQS Law Firm, Stockholm

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