Wine grower Ilja Gort left empty-handed in fight against Dutch Tulip Vodka
Thursday, September 27, 2018
Wine grower, writer, and television presenter Ilja Gort is the co-founder and owner of the Chateau de la Garde winery. One of the winery’s best-known and best-selling wines is ‘La Tulipe’, which graces the shelves of Albert Heijn supermarkets. Chateau de la Garde has multiple registrations for the word mark LA TULIPE. Last summer, De la Garde successfully defended its trademark against a Hema brand wine bearing a tulip on the label. This time, the offending product was a new product from the Clusius distillery: ‘Dutch Tulip Vodka’. De la Garde considered it an open and shut case: the use of the word ‘tulip’ on an alcoholic beverage product creates confusion with her LA TULIPE word mark. But things did not go her way in court. The product names might be similar, but that does not constitute trademark infringement. Clusius asserted that Dutch Tulip Vodka was not just a name chosen for the vodka: the vodka is actually made from Dutch tulip bulbs. De la Garde found itself confronting one of the limitations of trademark law: trademark ownership cannot preclude another party from using the same designation if that designation is purely descriptive, for example because it refers to a characteristic of the product, such as a raw material.
Chateau de la Garde nevertheless asserted that the exception would not apply. Specifically, the word ‘Tulip’ is featured so prominently on the vodka packaging (namely: it is printed in italics and is larger than the words ‘Dutch’ and ‘Vodka’) that is must still be considered an infringement. The Court in The Hague did not concur. Even by prominently displaying the word ‘tulip’, Clusius does not create the impression that its vodka originates from the same company, or that it has any commercial ties to Chateau de la Garde. One factor playing a role in this is that Clusius’ vodka bottle explains to the public that Dutch Tulip Vodka is made from tulip bulbs. The public thus sees the name as a descriptive designation. Conclusion: this judgment provides leeway for the use of descriptive names, even if these are prominently featured on the label. If there is any doubt that the public understands the designation to be descriptive, it helps to put the explanation on the label.
Bram Duivenvoorde, trademark lawyer
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