In December 2016, the Federal Court dismissed century-old winemaker Yalumba’s trade mark infringement claim against Jacob’s Creek owner Pernod Ricard. The Court determined that Jacob’s Creek BAROSSA SIGNATURE was not deceptively similar to Yalumba’s registered trade mark THE SIGNATURE.
Samuel Smith & Son, owner of the Yalumba brand (Yalumba), had been using THE SIGNATURE name for over 50 years and had registered the words as a trade mark since 1999. In late 2015, Yalumba brought proceedings against Pernod Ricard after the company introduced BAROSSA SIGNATURE red wines, a sub-brand to its existing Reserve range. Their application claimed that BAROSSA SIGNATURE was too similar to their registered mark THE SIGNATURE and amounted to trade mark infringement.
For Yalumba to succeed in their application, they would need to show that BAROSSA SIGNATURE was a trade mark that was deceptively similar to THE SIGNATURE. In making their decision, the Court considered three questions:
- Was Pernod Ricard using BAROSSA SIGNATURE as a trade mark?
- Is BAROSSA SIGNATURE considered to be deceptively similar to THE SIGNATURE?
- Did Pernod Ricard in good faith intend to use the words BAROSSA SIGNATURE in a descriptive way, or a way to indicate geographical origin or some other characteristic of the wine?
Was BAROSSA SIGNATURE Used ‘as a Trade Mark’?
A common misconception is that trade mark infringement occurs whenever a trade mark is present or used. Under the Trade Marks Act 1995 (the Act), however, infringement takes place when the infringing party is using the mark as a trade mark, not merely as a description or making reference to the mark or brand.
Section 17 of the Act defines a trade mark as a badge of origin so that consumers can distinguish the goods and services of one trader from that of another trader. It was clear that Pernod Ricard had been using the words BAROSSA SIGNATURE for its Reserve sub-brand, but Pernod Ricard argued that they did not use the words as a trade mark. If they could show that they were not using BAROSSA SIGNATURE as a trade mark, they would be successful in defeating Yalumba’s application.
The Barossa Signature wines were a sub-brand of the larger Jacob’s Creek Reserve brand. Pernod Ricard submitted that the only trade marks on these wine labels were Jacob’s Creek and Reserve and that Barossa Signature was only used as an extra description of the product. Justice Charlesworth considered the words BAROSSA and SIGNATURE as independent words and as the combined term BAROSSA SIGNATURE.
Justice Charlesworth examined BAROSSA and SIGNATURE separately, finding them both to be descriptive terms. Barossa being a geographic location, and a term frequently used in relation to wine due to a large number of wine products and wineries in the region, and ‘Signature’ being considered to be a common word used in the wine industry and a laudatory term. Although both words were descriptive, Justice Charlesworth emphasised that the combination of the words was uncommon and peculiar so as to change the overall impression of the expression.
The words, BAROSSA SIGNATURE, had more meaning together rather than independently such that Justice Charlesworth considered it to be acting as a slogan. A slogan, in turn, is regarded as a badge of origin, setting its products apart from other traders. Pernod Ricard’s packaging and marketing material supported this interpretation. Justice Charlesworth concluded that even if Pernod Ricard did not intend for BAROSSA SIGNATURE to be considered a trade mark, the way that they used it was indeed a mark.
Are They Deceptively Similar?
Since the Court considered Pernod Ricard to have used the words as a trade mark, the next question is whether the two marks were deceptively similar. Section 10 of the Act states that marks are deceptively similar if they appear alike such that it is likely to cause confusion or deceive. If there is no likelihood of confusion, then the trade marks are not considered deceptively similar, and no infringement has occurred.
Justice Charlesworth focussed on the effect or the impression of Yalumba’s trade mark. In this case, while SIGNATURE was the mark’s primary element, the word ‘THE’ that preceded it changed its meaning and overall impression.
By using THE SIGNATURE instead of SIGNATURE, Yalumba was referring to not any signature ‘as an abstract concept, nor to “any old signature”, but to THE signature’. The fact that Yalumba included the article THE creates a different impression and shifts the emphasis of the distinctive element.
On this matter, Yalumba submitted that it had built so strong a reputation that consumers were familiar and identified SIGNATURE (alone) as Yalumba’s brand. Although Yalumba has used the word SIGNATURE for its red wine for 50 years, the Court did not think that consumers would refer and consider the Yalumba wine by the word SIGNATURE alone.
Justice Charlesworth then went back to considering BAROSSA SIGNATURE and its own elements. The fact that the combination of the two words was ‘grammatical nonsense’ led Justice Charlesworth to believe that the impression BAROSSA SIGNATURE created was significantly different to the impression emanating from THE SIGNATURE. Although both marks contain the words SIGNATURE, the combinations decreased the likelihood of confusion.
Pernod Ricard tried to rely on the defence to trade mark infringement under section 122(b)(i), which would absolve them if the Court found they used the name BAROSSA SIGNATURE in good faith to indicate geographical origin or some other characteristic of the product.
Since Justice Charlesworth had already determined that they had used BAROSSA SIGNATURE as a trade mark, but that the two marks were not deceptively similar, she did not consider this question in much detail.
In passing, Justice Charlesworth commented that had she found the marks to be deceptively similar, Pernod Ricard’s reliance on this defence would fail. Her Honour conceded that they might have used BAROSSA SIGNATURE as a geographic indicator, but they did also have the intention to use BAROSSA SIGNATURE as a badge of origin too.
- Business owners should familiarise themselves with what trade marks are and how they are used. A phrase can be considered a trade mark even if the other party intended for consumers to understand the words as a description or an indication of particular characteristics of the goods.
- Understand the elements of your trade mark so that you can identify the distinctive element. If using common terms as trade marks, remember that you won’t get an exclusive right to the commonly used word itself – but as it is used together with other distinctive elements. In this case, it was using SIGNATURE together with the article THE that assisted.
- Your reputation, unless it is very well known, is unlikely to provide you with a stronger claim to a particular mark. Although Yalumba had been using THE SIGNATURE for over 50 years compared to Pernod Ricard’s few months, the Court did not give this much weight in their decision.
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