No celebrations for Unilever with Champagne shampoo

09 February 2011

Richella Soetens, Linda Brouwer

On 8 October 2010 the District Court of The Hague ordered Unilever to immediately cease the use of theprotected designation of origin Champagne for Unilever’s celebratory Champagne shampoo and to recall all the Champagne shampoo bottles from the stores and distribution centres. So much for sparkling hair in 2011…

In July 2010 Unilever launched a new shampoo under the name “Champagne shampoo” to celebrate the 70th anniversary of the Andrélon trade mark. Unilever rolled out an extensive media campaign for the introduction of said shampoo encouraging the consumer to wash their hair with this celebratory shampoo. 







  

Not everyone could appreciate this celebration though. The organisation representing the Champagne producers, Comité Interprofession du Vin de Champagne (CIVC), was only up for a party in court and summoned Unilever to cease and desist the use of the indication Champagne. They argued that the indication Champagne can only be used in connection with the sparkling wine from the Champagne region in France and by selling this shampoo Unilever is violating the protected designation of origin Champagne.

Apparently Unilever had not contested the infringement as it was not in contention that by trading Champagne shampoo Unilever infringed the protected designation of origin Champagne within the meaning of art. 118 m of Regulation 1234/2007. The District Court therefore awarded the claimed injunction and Unilever was forced to stop celebrating. 

An interesting issue that came up is that the District Court considered that not all use of the indication Champagne is prohibited. This consideration was not substantiated, but could it be possible to lawfully use the indication Champagne for something else than sparkling wine from the Champagne region? Don’t tell this to CIVC…

As a result of the injunction imposed by the District Court, Unilever was ordered to immediately refrain the use of the protected designation of origin Champagne.

As regards the advertisements, the District Court held that in certain circumstances a party who infringed a protected designation of origin is obliged to take appropriate measures to discontinue the created wrongful situation. This entails that, even in the event the advertisements themselves do not infringe the protected designation of origin, Unilever should cease the promotion of the Champagne shampoo, since the promotion stimulates the trade in the Champagne shampoo, whereas Unilever is aware of the fact that this trade is wrongful. 

In addition, the obligation to take appropriate measures also meant that Unilever was obliged to recall the Champagne shampoo. Despite Unilever’s assertion that recalling the shampoo bottles from the shelves of the retailers would be disproportional, Unilever was ordered to recall the bottles both from the distribution centres and from the retailers.

The District Court spoiled the party mood of Unilever completely by ordering Unilever to pay the full procedural costs in accordance with Article 14 of the IP Enforcement Directive.[1]As a result of this, the District Court ordered Unilever to pay to CIVC € 25.000 for procedural costs.  The District Court considered that article 1 paragraph 2 and article 22 et seq of the TRIPs Agreement designate geographical indications such as indications of origin of wines as intellectual property rights. Therefore a designation of origin should be regarded as an intellectual property right within the meaning of article 2 paragraph 2 of the IP Enforcement Directive, because the EU is bound by the TRIPs Agreement and the IP Enforcement Directive is based on the TRIPs Agreement.

Unfortunately this case does not give insight into the scope of protection of the protected designation of origin Champagne. However, the conclusion that can be drawn from this case is that the party that has infringed a protected designation of origin has in certain circumstances the obligation to take appropriate measures to discontinue the created wrongful situation. These measures could be far-reaching.






[1] Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.

Authors

Image of Linda Brouwer

Linda Brouwer

Associate
Netherlands

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