Waterford suffers trademark reversal

Waterford Wedgwood has failed in a bid to stop a South African wine maker from using the "Waterford" name as a trademark in Europe.

The European Court of First Instance in Luxembourg ruled yesterday that South African-based Assembled Investments could apply to the EU's trademark office to have the name "Waterford Stellenbosch" registered as a trademark in Europe.

The case is one of a number that Waterford Wedgwood has brought against the South African group in Ireland, Europe and the US - the US being the Irish company's most important market - to protect its trademark.

In a statement yesterday, Waterford Wedgwood said it was considering its "options to appeal this ruling in the European courts".

The Irish-listed company won the right to register the Waterford name as a trademark 25 years ago in the Supreme Court. The name is also registered by it in Europe and the United States. It is most closely associated with the cut crystal glasses produced in its factories in Waterford and eastern Europe.

Assembled Investments originally applied to the EU Office for Harmonisation in the Internal Market, which manages trademark registration, to register the name in July 2000. The brand is used on wines it produces in South Africa. Waterford Wedgwood opposed the move claiming that, if Assembled Investments was allowed to use the trademark, it would cause confusion between the two brands.

The EU regulator approved the trademark application but this was overturned by an internal board of appeal which upheld the Irish company's objection.

Assembled Investments subsequently challenged this ruling in the European Court of First Instance. Waterford again opposed this, using the same arguments it had put to the Office for Harmonisation in the Internal Market.

The court heard the case recently and yesterday published its ruling. It rejected the appeals board ruling, a move that paves the way for Assembled Investments to get the Waterford Stellenbosch brand registered as a trademark in the EU. The court pointed out that, under European law, in order for there to be a "likelihood of confusion" between two similar trademarks, the products involved also had to be similar.

Waterford had argued that the two products were complementary because wine is drunk from glasses and specific kinds of decanters and carafes are used to serve it. However, the court dismissed this on the basis that wine can also be drunk from "other vessels", while glasses, decanters and carafes are also used to consume other kinds of drinks.

In its statement, Waterford Wedgwood said: "We have initiated legal proceedings against Stellenbosch in Ireland, the US and Europe. Despite the decision of the European Court of First Instance, we are confident that, ultimately, our rights over the Waterford trademark will be confirmed."