Kiwi trademark battle

In an interesting twist of irony, an international trademark battle over the term "kiwi" for use with wine is raging. The New Zealand Herald reports in Winemakers get the Gallic brush-off over Kiwi trademark that a French outfit has registered the mark "Kiwi Cuvee" in Europe, for use with wine. As many may know, the term "kiwi" refers to a bird found in New Zealand. It is also a yummy fruit, and shoe polish (which is made in Australia). People and things from New Zealand are often called "kiwis."

A guy from New Zealand started making a chardonnay called "Kiwi White." He sold a bunch in Sweden, and was ready to move forward with more orders in Europe when the Kiwi Cuvee mark registered. This effectively blocked his use throughout Europe. He was technically using the mark in Europe before the French group, but the French got the mark registered first. He now faces a long and expensive battle to use his mark in Europe. The New Zealander gripes that "kiwi" can have a source-origination connotation such as "champagne," and laments the fact that the French go after non-champagnes, but then steal the term "kiwi."

This is a lesson that trademark searches and clearance must be done well in advance of adoption of a mark. If you plan on using the mark only in your country, then it can be acceptable to proceed with a limited search in your country. If you plan on expanding to international use, then you should not only perform an international trademark search, but you should also keep your international trademark rights current through either the Paris Convention or Madrid Protocol.