We earlier discussed two relevant but general legal issues when applying to register your wine trade mark. Below, we turn our attention to legal considerations applicable only to wine trade marks in Australia.
Classification of Wine and Similarity With Beer
Your wine trade mark application should identify Class 33 for alcoholic beverages (except beers) as the appropriate class under the Nice Classification. Trade mark rights are limited to the goods and services specified in your application, and subsequent registration. This means that if you are using a particular trade mark for wine, you cannot prevent other traders from using the same mark for other unrelated goods.
In Australia, however, wines are considered similar goods to beers. So in practice, you should broaden your trade mark search to include wine and beer. If you are using the Australian Trade Mark Online Search System (ATMOSS) to complete your conflict check, you should search similar marks for Class 32 for beer, as well as Class 33 for wine.
Check the Australian Grape and Wine Register for Protected Terms
The Australian Grape and Wine Authority (AGWA) is a statutory body established by the Australian Grape and Wine Authority Act 2013 (formerly the Wine Australia Corporation Act 1980). AGWA trades as Wine Australia and is responsible for regulating and promoting the Australian wine industry in Australia and overseas. AGWA, in compliance with the Agreement Between Australia and the European Community on Trade in Wine (The Wine Agreement), maintains a register of protected terms and expressions used in connection with wines in Australia and other member countries.
Before choosing your trade mark, you should check the AGWA register to see if your mark consists solely of, or contains any of the protected terms on the AGWA register. Terms on the AGWA register include the following:
- Geographical Indications (GIs);
- Traditional Expressions (TEs);
- Quality Wine Terms (QWTs); and
- Additional Terms (ATs).
If your trade mark constitutes solely of or includes one of these terms, it may be subject to an objection under sections 42 or 43 of the Trade Marks Act 1995 as either contrary to law, or as likely to deceive or cause confusion.
What is an Objection Under the “Contrary to Law” Provision?
The use of a mark as a trade mark may be contrary to law when it constitutes or contains a word that is identical or resembles a protected word on the AGWA register. Examples of protected terms on the AGWA register are Quality Wine Terms such as Vintage, Cream and Tawny. These words cannot be used in relation to wine unless the grape product satisfies the quality or characteristics associated with these words.
What is an Objection Under the “Likely to Deceive” Provision?
The use of a mark as trade mark may be considered as misleading or deceptive if it contains a known Geographical Indication (GI), and the goods the GI is used on doesn’t originate from the associated wine region. Examples of protected GIs include:
- Bordeaux (France);
- Barossa Valley (Adelaide, Australia); and
- Chianti (Italy).
Using these words on wines not originating from such well-known wine regions is likely to deceive and cause confusion in the marketplace and will likely be refused registration.
If your trade mark contains any of the protected terms from the AGWA register, you may be able to overcome the objection by agreeing to add an endorsement (i.e. accepting a condition to your use and registration of the trade mark). However, if the trade mark solely consists of a protected term, then the objection will be difficult to overcome.
Questions? Get in touch with our trade mark lawyers on 1300 544 755.
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