Wine and Sweet Words – Intellectual Property and Identifying Drinks. An Article from the Bucerius Law Journal.
A. The facts
This year’s Oxford International Intellectual Property Moot problem dealt with two wineries in the fictional country of Erewhon: Whispering Gums Winery (“Whispering Gums”), the appellant, and Loddon River Vineyards (“Loddon River”), the respondent.
Whispering Gums produced a sparkling white wine marketed under the name “Wizard’s Wizz Erewine”. The term “Erewine” was widely used by wine producers in the country to refer to a double-fermented sparkling white wine made in Erewhon using locally grown grapes. Wizard’s Wizz Erewine was sold in recently invented and specially designed bottles with 1cm-wide internal dimples instead of a flat interior, enhancing the effervescence, flavour and aroma of the bottle’s contents by increasing the number of bubbles produced once a bottle had been opened.
Improving a drink’s flavour was not the only effect of the bottle: A study found that the blood-alcohol levels of persons drinking alcoholic beverages rose between 1.5 to three times faster when they consumed alcohol from the newly invented bottle as opposed to a regular one. Essentially, the bottle ensured that consumers became drunk faster, which raised public policy concerns. Young Erewhonian citizens used Wizard’s Wizz Erewine primarily to become intoxicated as quickly and cheaply as possible, which was assumed to have led to several hospital admissions and arrests.
Whispering Gums held a patent (“the 789 Patent”) in respect of this bottle design. Claim 1 of the 789 Patent read: “A glass bottle for enhancing the effervescence of sparkling wines, being a bottle [the claim goes on to describe the interior dimpling].” While the claim itself specifically referred to “sparkling wines”, the description of the invention referred to beverages containing carbon dioxide in general.
In November 2015, Loddon River launched an alcoholic apple cider and a fizzy non-alcoholic elderflower wine marketed as “Elderflower Erewine” in bottles physically identical to the those used by Whispering Gums for its Wizards Wizz Erewine.
At first instance, the High Court of Erewhon faced two complaints. First, Whispering Gums alleged that Loddon River’s selling apple cider and elderflower wine in a bottle identical to the one patented under the 789 Patent constituted patent infringement. Second, Whispering Gums contended that Loddon River’s use of the word “Erewine” to describe its non-alcoholic Elderflower wine constituted passing off in its extended form.
Madame Justice Davies found in favour of Loddon River. She reasoned that, although Loddon River’s bottles fell within the scope of Claim 1, the 789 Patent was invalid for being contrary to public policy or morality under section 10 III of the Patents Act 1980. Furthermore, she held that the word “Erewine” lacked goodwill or, if there was goodwill associated with it, the claimant was not a member of the class sharing the goodwill.
In the Oxford IP Moot the case is always decided by a fictional court (the “Erewhonian Supreme Court”) in an imaginary country (“Erewhon”) that has not previously dealt with the legal questions before it. Case law from any country is persuasive authority. The mooters therefore always have to argue as regards what reasoning the Erewhonian court should adopt, and why.
The case had five major issues. Two of them concerned patent law, and the other three pertained to extended passing off, an IP doctrine that derives from trademark law.