PRESS RELEASE
2024.08.28
A major legal breakthrough in the United States to better protect Cognac
As part of its mission to protect the Cognac Geographical Indication (GI) worldwide, the National Interprofessionnel Cognac Bureau (BNIC), in collaboration with the National Institut of Origin and Quality (INAO), has just won a major legal victory in the United States. The United States Court of Appeals for the Federal Circuit (CAFC) has issued a decision that will significantly clarify and strengthen the protection of products under GIs or certification marks, such as Cognac, in the U.S. market.
FOR THE FIRST TIME, THE FEDERAL COURT ESTABLISHES CRITERIA FOR THE PROTECTION OF GI’S RECOGNIZED AS CERTIFICATION MARKS IN THE UNITED STATES
Following a historic decision by the United States Court of Appeals for the Federal Circuit (CAFC), GIs protected as “certification marks” in the U.S.* now enjoy the same level of protection as traditional trademarks. This ruling goes far beyond previous jurisprudence by clarifying the criteria for defining the reputation of a GI or certification mark and assessing the risk of confusion or dilution with another mark.
This ruling is part of an action initiated in 2020 against the registration of the trademark “COLOGNE & COGNAC ENTERTAINMENT”, an independent music label, which posed a risk of confusion and association with the common law certification mark “Cognac”.
The Federal Court has indeed overturned a previous decision that considered the use of the term “Cognac” within this trademark not to infringe upon the appellation, disregarding the existing jurisprudence.
Given the significant risk identified for holders of certification marks and GIs protected as such, the BNIC and INAO appealed the decision. They received crucial support from about ten groups and associations of producers and/or holders of American certification marks worldwide**, including the Scotch Whisky Association, which formalized this support in an Amicus Curiae brief (“friends of the court”).
“This decision is the result of significant investment by the Cognac sector and INAO, as well as substantial groundwork and coordination by the BNIC’s Department of Appellation Protection and Intellectual Property. It is also important to highlight the key role played by associations and GI producer groups worldwide, who supported the BNIC and INAO’s action with the shared goal of strengthening the protection of GIs and certification marks in the United States,” commented Amandine Duthilleul, Director of Cognac Appellation Protection at the BNIC.
While awaiting a decision on the future of the “COLOGNE & COGNAC ENTERTAINMENT” trademark, this step is seen as a victory as it advances U.S. law on the protection of all GIs and certification marks, such as Cognac.
Cognac, exported at a rate of 98%, enjoys a strong reputation and a highly prestigious image, making it susceptible to counterfeiting, misappropriation, deceptive uses, and reputation hijacking. Protecting the Cognac GI is therefore a priority for the sector, particularly in the United States, its largest export market. The BNIC is mobilized on all fronts—internationally, nationally, and regionally—to protect, defend, and promote the Cognac appellation.
© BNIC / Pierre Baëlen
*Since GIs are not recognized and protected as such in the United States, the preferred legal protection tool is the use of a certification mark.
** The BNIC extends its sincere thanks to the signatories of the Amicus Curiae brief: Scotch Whisky Association, Colombian Coffee Growers Federation, Confédération Générale Des Producteurs De Lait De Brebis Et Des Industriels De Roquefort, Consejo Regulador del Tequila, A.C., Consorzio del Prosciutto di Parma, Distilled Spirits Council of the United States, Inc., Federation of the Swiss Watch Industry FH, Irish Whiskey Association, Kentucky Distillers Association, Napa Valley Vintners, Organization for an International Geographical Indications Network.
