Australians love their wine, and it is a love that the international community shares. You are undoubtedly familiar with Penfolds, WolfBlass and Jacob’s Creek. These are three of Australia’s most recognised wine trade marks, both domestically and abroad. Consumers are likely to associate these names with Australia as the country of origin immediately. Trade marks are then useful for branding and marketing strategies.

If you are a wine producer and are thinking about launching your grape product in Australia, you would know that it is critical that you register your trade mark. In many respects, applying for a wine trade mark is like applying for any other trade mark.

There are, however, a few differences that specifically apply to trade marks for wine and grape products. Below, we begin outlining some legal considerations to keep in mind when choosing and applying for a wine trade mark in Australia.

Your Trade Mark Should be Distinctive

Trade mark registration gives you an exclusive right to use your trade mark in relation to the goods and services in your application. If your trade mark is a word, it means that you can stop other people from using this word in the same or similar class of goods and services. For this reason, as a public policy consideration, the law makes it difficult for applicants to use solely descriptive or commonly used words as trade marks. For wine marks, examples of descriptive elements include the following:

  • The year of vintage (e.g. 1983);
  • Words describing the wine’s characteristics (e.g. bubbly); or
  • Words commonly used by other traders in the wine industry (e.g. Estate, Cellars and Vintage).

Your Trade Mark Should Be Unique

A trade mark registration gives the owner the right to prevent others from using similar trade marks. The law protects registered trade marks by making it difficult for owners of subsequent trade mark applications to obtain registration for substantially identical or deceptively similar marks.

If you are in the initial stages of choosing a trade mark, we strongly recommended you perform a search of the Australian Trade Mark On-line Search System (ATMOSS) and the marketplace for potentially conflicting marks.

Conflicting trade marks are those that are considered substantially identical or deceptively similar to your trade mark. It is relatively straightforward to identify substantially identical trade marks. Determining whether a mark is deceptively similar requires close analysis of complex rules drawn from case law. 

An example of a wine trade mark that was considered deceptively similar is BAREFOOT vs BAREFOOT RADLER. On the other, HILL OF GOLD vs HILL OF GRACE was found to be sufficiently different. That is, not deceptively similar.

Key Takeaways 

Determining whether trade marks are distinctive or descriptive and whether trade marks are deceptively similar can sometimes be complicated and confusing. If you are new to trade marks, make sure that you do your homework and complete the relevant searches.

Questions? Get in touch with LegalVision’s trade mark lawyers on 1300 544 755.

Raya Barcelon

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