The Bordeaux Case

By majority Decision, in the case record of Civil Appeal No. 96.02.24177-2, published in the Court Gazette (September 21, 2005, Section 2, page 156), the 2 Regional Federal Court of Appeals issued a decision in favor of the Institut National des Appellations D’Origine de Vins et Eaux-de-Vie, canceling registration of the "Bordeaux" mark filed by the defendant and appellee, Bordeaux Buffet S.A, in the food service segment.. The decision can still be subject to appeals.

Overturning the first instance decision, the Decision was based on the understanding that, since Bordeaux was a name designating a renowned wine-producing region, its use to identify food and ice services – which are closely related to beverages – would be considered parasitic exploitation.

The vote of the reporting judge specifically states that, in offering food and ice services, there is "clear allusion to a good wine, such as Bordeaux, in open breach of the basic principals of the right in question." Additionally, the issue must be examined considering the intention of the distinguishing signs used in commerce, which, according to the Decision, is "to attest to origin for the consumer, so that indiscriminant use of recognizable designations, most notably famous ones like the Bordeaux region, cannot be justified, even if employed to designate a variety of products and services."

Although based on the Industrial Property Code of 1971, the majority opinion makes it clear that this type of parasitic exploitation of famous geographical indications is also distinctly prohibited by the prevailing Industrial Property Law, No 9,279/96, in its Art. 124, Item IX, which prohibits registration of a geographical indication as a mark, its imitation likely to cause confusion or a sign that may falsely suggest geographical indication.

Moreover, the majority vote demonstrated considerable sensitivity to the malign consequences that parasitic use of a famous geographic indication can cause to its rightful title-holders, since it fundamentally threatens to intensify confusion with the passing of time. Parasitic application can even lead to loss of the geographical indication’s distinctiveness.

The Decision is exceptionally important, above all because it places the matter on the same grounds as protection of marks, geographical indications, and any other signs employed in commerce, protecting against undue benefit from illegitimate mechanisms of competition, such as in the case of a renowned geographical name, from which the title-holder of the disputed registration, not residing in that region, would extract undue advantage in a corresponding sector.

In addition to demonstrating the country’s maturity in the area of industrial property, a very current and sensitive area and the importance of which all Brazil’s distillates and wine producers have been recognizing, this decision also establishes reasonable parameters for the protection of geographical indications, which cannot be separated from the fundamental principals that govern competition. The appropriate defense of geographical indications is essential for the country, which has a robust agricultural sector, to earn the respect of its international peers in an environment of growing exchange between markets.