TIPS^®  Taiwan Intellectual Property Special

Protections to the Geographical Indications (Beaujolais)

The Supreme Administrative Court recently ruled that a trademark registration for Chinese characters, “Bao Gehy Lai,” a sound-alike of the famous French red wine “Beaujolais,” in the goods of alcoholic drinks would cause consumer confusion, and the trademark registration should be revoked.

“Beaujolais” is a geographical area in France that produces grape wine, and is also a name of famous graph wine. Although red wine has become popular in Taiwan and its promotion has gradually increased, there is no consistency in translating brand names into Chinese. A wine vender applied in 1996 for trademark registration of Chinese Characters “Bao Gehy Lai” used in the goods of champagnes, fruit wine, and Kaoliang Wine sorghum Liquor). After the registration was approved by the TIPO, the National Association of Geographical Origin in France initiated a cancellation action.

The Association alleged that “Beaujolais” is a geographical origin of grape wine, and only the grape wine produced in “Beaujolais” is entitled to use that name. The Chinese Characters “Bao Gehy Lai” sounds like the French pronunciation of “Beaujolais,” and, when used in the goods of alcoholic drinks, would cause likelihood of confusion to the consumers. It was requested that the registration should be revoked. However, the TIPO insisted that the trademark “Bao Gehy Lai” was registered in Chinese Characters, while “Beaujolais” is French. They were different in appearance. The Taiwanese consumers were used to Chinese brand names and unfamiliar with French pronunciation. Therefore, there would be no consumer confusion, and its decision on the registration was sustained.

The Association continued to appeal up to the Supreme Administrative Court. The Court ruled out the TIPO’s decision, stating that although there was no uniform Chinese translation for “Beaujolais,” if the phonetic translation of a mark is similar in pronunciation, it would be associated to the same English word. Furthermore, the mark is used for alcoholic drinks, similar to the goods of “Beaujolais,” it is very likely to cause consumer confusion. Accordingly, the TIPO’s decision was vacated.