Wax Seal Dispute Drips onto Appeals Court

October 17, 2011


The trademark dispute over American bourbon producer Maker’s Mark’s dripping wax seal is proceeding to a federal U.S. Appeals Court. This case centers on two issues, with the first being whether tequila maker Casa Cuervo’s use of a similar seal to that of Maker’s Mark constituted infringement, and the second being the validity of the Maker’s Mark dripping wax seal as a trademark, a type of trademark known in the U.S. as a “trade dress”. Duet’s Blog has an excellent summary of the original ruling. Below is a summary of the latest development reported by the Associate Press article:

Maker’s Mark won an order in 2010 awarding it exclusive rights to the dripping wax seal. U.S. District Judge John G. Heyburn II in Louisville granted Maker’s Mark an injunction prohibiting any other company from using a similar seal and look, saying the bourbon maker held a valid trademark.

The order ended a seven-year long lawsuit between Deerfield, Ill.-based Fortune Brands, which owns Maker’s Mark, and London-based Diageo North America and Casa Cuervo of Mexico, which used a dripping red wax seal on special bottles of its Reserva tequila. Fortune Brands has since split its liquor business into a new company called Beam Inc.

In Canada, Maker’s Mark’s dripping wax seal trademark is registered as a “distinguishing guise”, which is the Canadian equivalent of the trade dress. A distinguishing guise is defined under section 2 of the Canadian Trade-marks Act as the following:

(a) a shaping of wares or their containers, or
(b) a mode of wrapping or packaging wares

the appearance of which is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others;

So, in essence, a trademark need not necessarily be merely words or image; rather, both in the U.S. and Canada, a trademark can be the product’s physical appearance itself i.e. how a product is packaged or shaped. However, there are limitations to the registration of distinguishing guises under Canadian trademark law: the distinguishing guise must be distinctive of a particular source of wares and services, the registration of a distinguishing guise cannot “limit the development of any art or industry”, such guise cannot be a functional component and it cannot be an inherent part of the wares. It is when an argument can be made with respect to these limitations that the validity of distinguishing guise (or trade dress) trademarks such as Maker’s Mark’s dripping wax seal can be challenged.

On another note, this Maker’s Mark case inspired me to take the below picture of a Giuseppe Giusti balsamic vinegar bottle at a local Italian grocery shop to use it on my services page.

Trademark on wax seal

Unlike with Maker’s Mark’s dripping seal, Giuseppe Guisti’s logo is impressed on its seal. Wax seals on bottles or other goods with initials or logos impressed on them may have been one of the earlier forms of trademarks to distinguish one’s bottles from that of a competitor. Maker’s Mark’s use of a dripping wax seal, sans logo impressed, on its bourbon bottles as a distinguishing guise trademark in itself is, if nothing else, certainly creative. Now, I suddenly have an urge for some bourbon on the rocks.