Wine glass

LEGAL experts say wine makers, especially small up-and-coming producers, should register trademarks over their wine grapes as well as their wines, following a Supreme Court of Appeal judgment this week.

The judgment found that registering a trademark over wine would not offer protection if someone else started selling wine grapes under a similar name.

The judgment means that wine makers will not be able to prevent wine grape sellers from trading on the wine maker’s name and using it to sell grapes. The precedent-setting judgment is also of interest to intellectual property lawyers because it gives guidance on what "similar goods" means in the Trade Marks Act.

Western Cape farmers Zonquasdrift Estates and Zonquasdrif Vineyards own farms close to the Zonquasdrift crossing, just 1km apart, and they both grow and sell grapes for wine.

Zonquasdrift Estates registered the mark "Zonquasdrift" in class 33, which includes alcoholic beverages. Class 33 does not cover wine grapes, which are class 31.

Zonquasdrift Estates, and its owner, Alexander Mettenheimer, tried to interdict Zonquasdrif Vineyards from selling wine grapes under the name "Zonquasdrif Vineyards", saying it infringed on the Trade Marks Act.

For an infringement under the act, both the "marks" — "Zonquasdrift" and "Zonquasdrif Vineyards" — and the "goods" need to be identical or similar.

In its judgment, the Supreme Court of Appeal said the names were "virtually identical".

But the "goods" — wine and wine grapes — were not similar enough for an infringement, said Judge Fritz Brand. On behalf of a unanimous bench, Judge Brand said "the nature of the two products is entirely different".

"The one is a fruit — albeit inedible — and the other is an alcoholic beverage."

Judge Brand said the two were also not "sold in close proximity" because while wine was sold to the public in supermarkets, wine grapes were only bought by specialists and were not found in retail outlets.

"Wineries and co-operative cellars make use of specialists in the wine industry to buy their wine grapes from approved suppliers who comply with their own established quality control standards.

"The chance of these buyers confusing (Zonquasdrif Vineyards) wine grapes as the source of (Zonquasdrift Estates) wine can therefore be safely excluded."

Herman Blignaut, a trade mark specialist and partner at law firm Spoor & Fisher, said that it would be prudent for wine makers who used their own grapes to register them in class 31, as well as their wine in class 33.

He said that more established wine makers who already had a strong reputation and goodwill in South Africa could also protect their rights by suing for "passing off".

However, smaller wine-makers who were yet to establish their reputation would be protected only through registration under the act, Mr Blignaut said.

Elmarie de Bruin, of MacRobert Attorneys, which represented the owner of Zonquasdrif Vineyards, agreed. She said the more well-known names, such as Nederburg, had other grounds to protect them.

But less well-known wineries should "get straight to the trademarks office", she said.