2.1 Section 42: Contrary to Law

Date Published

A ground for rejection under this section may apply when a trade mark or part of a trade mark is identical to, or resembles, an entry on the AGWA Register, and the application claims grape products relevant to Class 33. The presence of such a match on the Register of Protected Geographical Indications and Other Terms (the ‘AGWA Register') indicates that the use of the trade mark may contravene the Wine Australia Act, unless that use is in accord with conditions specified in the relevant entry on the AGWA Register.

In order to be satisfied that use of the trade mark will comply with the provisions of the Wine Australia Act, the Registrar will require the applicant to consent to the following condition of registration:

It is a condition of registration that the trade mark will only be used under the conditions entered on the Register of Protected Geographical Indications and Other Terms for use of the <Geographical Indication/ Traditional Expression/ Quality Wine Term/ Additional Term> <> and that the use will accord with the Wine Australia Act 2013.

Consent to this endorsement will allow the section 42 ground for rejection to be withdrawn.  


2.1.1 Simple use of a GI

When protected terms appear in trade marks for grape products they convey some information about the goods irrespective of their manner of representation and the degree of prominence of the protected term in the trade mark.  Regardless of whether the trade mark is in plain text or a composite trade mark, the presence of a protected term may attract a ground for rejection under section 42(b).

Typically trade mark owners use GIs in their trade mark to convey information about geographic origin.  Trade marks such as GREATER PERTH VINTAGE for use on “wines” contravene the Wine Australia Act because GREATER PERTH is listed as a GI on the AGWA Register.

In these circumstances, the Registrar will raise a ground for rejection under section 42(b) and will invite the applicant to consent to the following endorsement and its conditions as the means of overcoming the ground for rejection:

It is a condition of registration that the trade mark will only be used under the conditions entered on the Register of Protected Geographical Indications and Other Terms for use of the Geographical Indication GREATER PERTH and that the use will accord with the Wine Australia Act 2013.


2.1.2 Ordinary English words which are also registered GIs

It is possible for a trade mark to contain a protected term but the context in which it is presented in the trade mark does not actually refer to a term on the AGWA Register.  In these circumstances, the Wine Australia Act is not contravened and so a section 42(b) ground for rejection should not be raised. For example:

ARTIST’S PALETTE

This is a well known term in the English language for a board on which a painter arranges and mixes paints.  

The word PALETTE is listed in the AGWA Register as a GI in France.  However, the significance for Australian consumers of ARTIST’S PALETTE as a well known term far outweighs any reference the word PALETTE has to a GI.  Consequently, it does not contravene the Wine Australia Act or section 42(b) of the Trade Marks Act 1995.

In Ross and Veronica Lawrence [2005] ATMO 69 (‘Feet First’) Hearings Officer Iain Thompson offered the following guidance:

32. Thus, I consider that where the context of a (term which is also a) geographical indication makes it obvious that it is being used within a trade mark for the sake of its ordinary English signification as a word contained in an English dictionary, with no potential reference to the geographical location, it is appropriate that the application should be accepted for possible registration.

34. This principle should apply where the geographical indication forms a part of a known and commonplace English expression or name which has no reference to the geographical location. If the protected expression is not part of a known and commonplace English expression or name, such as, for example, WICKER WOMBAT, or STONE DOCTOR, consideration will need to be given as to whether the term is being used for the sake of its ordinary English signification.

While the terms referred to in this decision are no longer on the AGWA Register, the principle remains relevant.

2.1.3 GIs which are also an individual’s name

Trade marks for wine products may contain an individual’s name where the first name/s and/or surname is a protected term.  The Wine Australia Act provides an exemption for individuals (section 40 DA(3)) to use their name even if it contains a protected term.  Note that the exemption only applies to individuals i.e. natural persons – not bodies corporate and other legal entities.

In this trade mark featuring the individual name RICARD FRANKEN, the surname FRANKEN is a GI.  If the applicant is the individual or natural person Ricard Franken, the Wine Australia Actexemption will apply and the trade mark application will not be subject to a section 42(b) ground for rejection.

If Ricard Franken assigns his trade mark right to another natural person of that name such as a descendent, the exemption will continue. However, if the trade mark is assigned to a party that is not a natural person of that name or is not a natural person at all such as Ricard Franken Pty Ltd, the exemption will cease.  In this case, the new owner will have no exemption to use the GI FRANKEN unless they can meet the conditions of that GI.  If such an assignment occurred while the application was under examination, a ground for rejection should be raised under section 42(b).


2.1.4 Geographic Locations which are under determination as a GI

Pending applications for inclusion on the AGWA Register have no level of protection under the Wine Australia Act until they are on the AGWA Register as a protected term.

When a word is under consideration by the GIC for inclusion on the AGWA Register as a protected term, there is no basis to raise a section 42(b) ground for rejection.  The examiner will continue to examine the trade mark’s capacity to satisfy the other provisions of the Trade Marks Act 1995.


2.1.5 Words that resemble GIs, TEs, QWTs or ATs

Trade marks that so resemble a protected term or contain a word that so resembles a protected term that it is likely to mislead if the conditions of use of the protected term are not met will contravene the Wine Australia Act.  They also will attract a section 42(b) ground for rejection.  This ground for rejection will also apply to English translations of protected terms in other languages.

The examples below display minor variations of GIs which resemble them to such an extent as likely to be taken for those GIs and indicate to purchasers the origin of the good as the GI.

BAROSA VALLEY

(the GI is BAROSSA VALLEY)

RHONE ROAD

(the GI is Côtes du Rhône)


In the second example the variation is one brought about by the English translation of the main word element of the French GI, Côtes du Rhône. The presence of the word RHONE means that the trade mark is likely to be mistaken for the GI.