We recently reported on the difficulties in registering wine trademarks consisting of names of geographic locations. The Federal Court of Canada (Trial Division) concluded that geography was one of the most important considerations of the average consumer when purchasing a wine. Accordingly, the registration of a trademark consisting of a geographic description unfairly prevented other local winemakers from listing that place of origin on their brands. As all good wine gurus know, it is the land, air, water and weather where grapes are grown that make each wine unique. Geographic location is a huge selling point for exclusive brands, as is evident with the popularity of real French champagne.

For more than eight decades, only 319 select vineyards within specific boundaries of north-eastern France had the right to brand their sparkling white wines as “champagne“. But now, due to the increasing demand for champagne from China and Russia, the Institut national de l’origine et de la qualite, which governs the Appellation d’Origine Controlee designation for champagne, is set to expand the appellation’s boundaries. The move is expected to provide a windfall for the lucky vintners whose vineyards happen to lie within the expanded region and highlights the value of a trademark consisting of a geographic location. Worldwide exports of champagne hit an all time record in 2007.

The name champagne is legally protected in most countries in order to prevent sparkling wines from outside the Champagne region of France from using the brand. Until two years ago, US winemakers, in particular, capitalized on the popularity of the brand and commonly sold sparkling wines under the name “California Champagne”, ignoring the outcries from indignant French viticulturists. But now, only a few older grandfathered brands in the US may use the name “champagne” in a move to correctly label US sparkling wines as “sparkling wines”. In 2003, Canada and the European Union entered into an agreement which committed the parties into protecting each others’ geographical indications for wines and spirits and the use of the term “Canadian Champagne” will cease after December 31, 2013.

Last year, the wine regions of Sonoma County and Paso Robles, California; Chianti Classico, Italy; Tokaj, Hungary; and Victoria, and Western Australia, Australia added their names to a growing list of signatories of the Joint Declaration to Protect Wine Place & Origin, a set of principles aimed at educating consumers about the importance of location to winemaking.

When Hillary Clinton recently accused presidential rival Barack Obama of political plagiarism by describing him as the candidate of “change you can Xerox“, trademark lawyers at Xerox Corporation winced. For years, Xerox has fought against the genericisation of the Xerox brand and trademark. A genericised trademark is a trademark or brand name that has become the colloquial or generic description for a particular class of product or service. The generic use of the term “Xerox” as a verb in place of the word photocopy, diminishes the value of the Xerox trademark in the marketplace and can result in the loss of intellectual property rights by the trademark holder. In the past, Xerox Corporation has attempted to police its brand use by launching advertising campaigns promoting the “Xerox machine” and has been successful in protecting the trademark in Canada and the United States. The brand has, however, become generic in Russia, Bulgaria, Portugal and Romania. Aspirin, Band-Aid and Thermos are also examples of brands which became victims of brand genericisation.

Under Canadian trademark law, a trademark should never be used as a noun (whether in singular, plural or possessive form) or as a verb. Every day phrases such as “I need a Kleenex” should be discouraged as the correct use of the trademark is “I need a Kleenex tissue”. It may seem natural and even beneficial from a marketing perspective to use the trademark as a noun or verb. Many like to have their trademark considered synonymous with the wares or services with which it is associated. However, certain trademarks, through misuse by their owners and others, have passed into the English language by becoming generic terms. The brands Escalator, Jacuzzi, Linoleum and Tabloid were all once trademarks of a specific product but are now generic terms commonly used to describe a product category. The use of a brand name as part of the English language, or any language should always be avoided to prevent genericisation of the trademark.