August 2017. On Monday, wine importer LFE and Dutch winemaker Ilja Gort crossed swords at the Utrecht District Court over Gorts’ new wine ZoMerlot. LFE claims the name is too similar to its own Sum-Merlot, which has trademark protection.

Storm in a wine glass?

Gort’s lawyer attempted to trivialise the dispute at the hearing, referring to it as ‘a storm in a wine glass’. But is it?

Trademark infringement

We believe this does constitute trademark infringement, pure and simple, regardless of whether or not it borrows a pun. The only question that counts is whether the two trademarks are similar enough to pose a risk of confusion for consumers. In our opinion, not only are the terms very similar (in Dutch Summer is Zomer), they also sound alike. More than enough to constitute a trademark infringement, we feel.

Double standards

Gort is incidentally known to be flexible when it comes to infringements. We distinctly remember that in 2014 he was in such a state when the Hema department store chain launched a wine bearing a tulip label. ‘Hema’s hijacking of my trademark cuts me to the quick’ he complained in various interviews before forcing his rival to back down.

Publicity stunt

Of course, you can’t rule out the possibility that Gort’s action might ultimately be nothing more than a publicity stunt. ‘How do I generate media attention for my new summer wine? Commit a trademark infringement, then get in touch with the press. Mission accomplished’.

Update: Gort refused trademark protection

It now appears that Gort has himself applied to register the name ZoMerlot as a trademark (which is odd, because during the hearing his lawyer said ZoMerlot was ‘simply an edition under the La Tulipe brand, not a trademark’). To our surprise, the Benelux Trademark Office has turned down the application. Surely not because it thinks ZoMerlot isn’t distinctive enough? That would be going a bit far. The refusal certainly can’t have anything to do with the older registration of Sum-Merlot since the BBIE isn’t entitled to refuse a trademark application simply because it resembles an older trademark.

Bas Kist