The right protection for a strong wine brand

As part of MARKEting, the trade mark is an important tool in customer communication and its effect as a "visibility booster" is clearly underestimated by many winegrowers. In the current difficult situation in the German wine industry, it is necessary for a winery to stand out from other wineries and thus make itself recognisable - and unmistakable - to its customers from the very first visual stage. This can be achieved through a strong brand.

The protection of a trade mark offers advantages compared to a non-registered trademark:

• Exclusivity rights:
  The owner of a registered trade mark has the demonstrable, exclusive right to use it and to prohibit third parties from using even similar signs for similar products.
• Enterprise value:
  A trade mark can significantly increase the value of a winery or wine.
• Deterrent effect:
  Once registered in the trade mark register, the ® sign can be placed after the trade mark. This is a better deterrent against imitations and "brandjacking".
• Legal certainty:
  Registration officially documents the trademark protection and allows an effective and faster defence against younger competitor trademarks in opposition proceedings before the trademark office instead of a potentially expensive lawsuit.

Many winegrowers have good ideas. But what can be protected as a trade mark? And what are the requirements?

Obtaining trade mark protection

• Winery names:
  the name of your own winery, the family name and the family coat of arms
• Logos:
  Graphic representations such as logos or newly designed symbols and image elements
• Slogans:
  creative, memorable slogans
• Wine names:
  self-conceived and imaginative names for your own wines
• Label design:
  the customised design of a wine label

Protection can be applied for as long as your own elements have not already been registered and therefore do not infringe any older trade mark rights. It is therefore advisable to first commission a professional register search, obtain an overview of existing, similar trade marks and compare them with your own designs.

A trade mark is protected for goods or services that have been divided into classes using the "Nice Classification". Class 32 is particularly relevant for wineries with protection for "de-alcoholised wines; de-alcoholised sparkling wines" and class 33 "sparkling white wines; still wines; sparkling wines with reduced alcohol content; wines with a protected designation of origin". Winery services, such as "organising and conducting wine tastings and wine tastings" fall into class 41 and the "provision of food and drink in restaurants and bars; operation of wine bars; conducting wine tastings [catering for guests with drinks]" are protected in class 43.

A trade mark - whether a word mark or a combined word/figurative mark - must above all be sufficiently distinctive. This means that it must clearly distinguish the winery and the wines from those of other wineries and convey to consumers the origin from a specific company. This is the "origin function". However, the trade mark may not directly describe the labelled goods or services or designate one of their essential characteristics. Generic statements and generic terms, on the other hand, cannot be protected.

Here are some examples of registered wine trade marks:

R2 Meisterstück, KUNTZWERK, Das blaue Schaf, Im Berg 531, Botenstoff, Rebritter, Smoking Flamingo, SAMTMUSCHEL, RAABE BIO IN A BOTTLE. What these trade marks have in common is that they are not only highly distinctive due to their imaginative or ambiguous word combinations, but are also very memorable for consumers.

These names are not protectable as trade marks

The lack of a minimum degree of distinctiveness and purely descriptive indications are absolute grounds for refusal within the meaning of Section 8 (2) Nos. 1 and 2 of the German Trade Mark Act. The following terms are not registrable or have been rejected by the German Patent and Trade Mark Office (DPMA): "Rotwein, Chardonnay", BIO FOR FUTURE, PET NAT TRY, Schiefer Traum, Perlweiss, Pionierweine, Unser Dorfschoppen, Der kleine Rosé, Thirsty Thursday, Cuvee 1936, BLANC ROYAL and ABISECCO.

It is also not possible to protect names that are already available as protected geographical indications (PGI) or protected designation of origin (PDO) in the EU register. These include, for example, Franconia, Würzburger Stein-Berg, Bayerischer Bodensee-Landwein, Crémant de Limoux, Champagne and Prosecco.

Indications of the geographical origin of products (wines) that are not PGI or PDO may not be misleading. However, they are protected in §§ 126 ff. of the Trade Mark Act. A prohibition of registration of such indications may also result from Section 8 (2) No. 4.

National or international trade mark protection?

In order to protect a trade mark in Germany, it must be registered with the DPMA. Pure word marks, word/figurative marks, even sound marks or 3D marks are possible. However, if protection is to cover the entire EU or individual countries, an EU trade mark must be registered with the EUIPO. It is also possible to extend the protection of a German basic trade mark internationally by applying to the WIPO. However, this depends on the focus and customer base of the winery and the marketing objectives.

By registering their trade marks, wineries can effectively protect their wine names and label designs from imitators. This increases the market value of the wines - and at best the entire winery. However, protecting a trade mark is often complex, as registrability is assessed on a case-by-case basis. A search in the register first helps to avoid infringing older trade marks that have already been registered. Trade mark protection is very complex, which is why wineries should seek legal advice for their individual protection strategy in advance.