Assorted sherry producers and shippers to write to producers and importers of ‘British Sherry’ asking them to stop using the word ‘sherry’ other than in relation to wines emanating from the Jerez district of Spain. Those producers and importers to begin proceedings for a declaration that they were entitled to describe their wines as ‘British Sherry’, this being something they had done for very many years. The sherry producers then counterclaimed for an injunction to restrain the producers and importers of British sherry from passing off their wine as and for wine produced in Jerez.
Held: despite the long established and widespread use of the expressions ‘British Sherry’ and ‘South African Sherry’ and the like, the word ‘sherry’ standing alone still denoted a wine from the Jerez district of Spain and not a type of wine or alcoholic drink which might be produced anywhere or in any way. Nevertheless, it remained to be considered whether objection could now be raised to the use of the expression ‘British Sherry’. The judge concluded it could not because the Spanish producers had delayed while the producers and importers of British sherry had built up a substantial goodwill, and in consequence it would be unjust to prevent the further use of the expression. However, there had been no acquiescence in the use of the term ‘sherry’ simpliciter and so an injunction would be granted to restrain the use of that word otherwise than as part of a composite phrase such as ‘British Sherry’ or ‘South African Sherry’.
There was no distinction in principle between a champagne shipper and a sherry shipper and a claimant had to establish in a claim of this sort was that the district in which the goods in question were produced and which gave the goods their name was defined with reasonable precision.
Cross J said of the Bollinger case: ‘The decision went beyond the well trodden paths of passing-off into the area of ‘unfair trading’ or ‘unfair competition”. And: ‘That being, as I see it, the scope of the decision in the Spanish Champagne case, it remains to see how far, if at all, it applies to the facts of this case. It was not suggested by the plaintiffs that there was any distinction to be drawn between a Champagne shipper and a sherry shipper so far as concerned his title to bring the action. No doubt a plaintiff in this sort of action must establish that the district in which goods in question were produced and which gives the goods their name is defined with reasonable precision either by law or custom. The court must obviously be in a position to decide in case of dispute whether or not any given plaintiff is a producer in the district in question. But the evidence in this case shows that there would not be the least difficulty in saying whether or not anyone claiming to be producer and shipper of ‘sherry’ was entitled to be so described. It can, of course, make no difference in this connection that the boundaries of the district are not static but are liable to change, provided that there is no uncertainty as to when this change occurs and what is its extent. Thus the fact that Montilla used to be classed as sherry but now has its own separate system of control does not affect the question at issue one way or another.’
Judges:
Cross J
Citations:
[1969] RPC 1
Jurisdiction:
England and Wales
Citing:
Cited – Bollinger v Costa Brava Wine Co Ltd 1960
Intruders into the market brought into England a wine somewhat similar to Champagne. It had been produced in the Costa Brava district of Spain. They marketed it under the name ‘Spanish Champagne’. The French growers and shippers brought an action to . .
Cited by:
Cited – Chocosuisse, Kraft Jacobs Suchard (Schweiz) Ag, Chocoladefabriken Lindt and Sprungli (Schweiz) Ag v Cadbury Limited PatC 29-Oct-1997
The plaintiffs brought actions in passing off against the defendant company in respect of their chocolate products. They objected to the use of the terms ‘Swiss Chocolate’ applied to chocolates not made in Switzerland.
Held: The claimant had . .
Cited – HP Bulmer Ltd and Another v J Bollinger Sa and others CA 22-May-1974
Necessity for Reference to ECJ
Lord Denning said that the test for whether a question should be referred to the European Court of Justice is one of necessity, not desirability or convenience. There are cases where the point, if decided one way, would shorten the trial greatly. . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Intellectual Property, Commercial
Updated: 01 July 2022; Ref: scu.239099