32B.2.4 Section 44: Comparison of Trade Marks

The usual practice and procedure for section 44 applies to wine trade marks. Note that words which have a specific meaning in relation to wine, or words which are common to the trade will be taken into consideration.

2.4.1 Citing word elements of class 33 trade marks

One feature of the wine marketplace is that most wines are packaged in similar bottles, so purchasers rely largely on labels to distinguish between the many different types available.

While the normal tests for comparing conflicting trade marks apply to wine trade marks, certain comparisons will occur more frequently due to the way wine is marketed and promoted. Words that describe geographical features occur more frequently in wine trade marks, just as ‘House of…’ and ‘Collection’ occurs more frequently in relation to trade marks for clothing. Many wine labels feature words with particular meaning in relation to the wine industry, such as ESTATE or VINEYARD, or commonly used words such as HILL or CREEK. As such, wine trade marks that are being considered in terms of section 44 will often feature the same or similar words. Where the main identifying feature is an invented word or an unusual known word there is often a high likelihood of confusion, such as between BOOMERANG HILL and BOOMERANG CREEK. Even though these trade marks are denoting different geographical features the prominence of the unusual word BOOMERANG, and the frequency with which HILL and CREEK occur in wine labels means that there is a risk of confusion. Consequently such trade marks are likely to be considered deceptively similar.

At the opposite extreme trade marks containing words which have a known meaning and are commonly used in relation to wine may not attract a ground for rejection when being considered under section 44. For example the word STONE is a popular surname and also appears individually or in combination with other words in many wine trade marks. Unlike the BOOMERANG examples, STONE CREEK and STONE HILL would not necessarily be confused. The marketplace is unlikely to assume exclusive proprietorship of STONE because of the number of wine labels from many different traders featuring that word.

As with non-wine trade marks, comparison of wine trade marks must therefore take into consideration invented, unusual and/or common words. The degree to which wine trade marks conflict will depend on whether such words have a meaning in relation to wines or whether they often appear on wine labels, as well as the standard principles which apply in comparing trade marks.

2.4.2 Similarity of goods within class 33

Wine is well known by consumers to be an alcoholic beverage product derived from grapes.  It is available in many varieties according to what grapes have been used in its manufacture.  Its consumers are used to referencing grape type, geographical origin and maker in their purchasing decisions (although price and taste will of course also influence the decision).  

While not all consumers are experts on the subject of wine, a reasonable degree of care in purchasing wine can be expected of its ordinary consumer.  It would not be likely that a real and tangible danger of confusion could exist between trade marks for wine unless there was a high degree of similarity between the trade marks.

As usual, examiners should refer to the rules of comparison when making a decision about the degree of similarity between trade marks.  

In comparing trade marks for wine with those for other alcoholic products, the degree of similarity required before a section 44 ground for rejection is likely to be raised is higher again. The reason for this can be understood if one is familiar with the nature of other alcohol products and the extent to which they are similar to wine.

The following table lists some examples of alcohol products and provides some indication of how they are similar to wine.  It can be useful when trade marks with a high degree of similarity are being compared.  Please note that this table provides a guide as to a likely outcome in these circumstances.

2.4.3 Similarity of goods between class 33 and class 32

The standard tests apply for determining whether goods are the same or similar to those in class 33. However it should be noted that a comparison of goods in class 32 and 33 has been set out below. This is because there is a particular similarity between these classes, for example low or de-alcoholised wines in class 32 are similar to wines in class 33. Similarly, a broad claim for alcoholic beverages in class 33 is similar to a broad claim for non-alcoholic beverages in class 32. This is because goods such as non-alcoholic aperitifs and non-alcoholic cocktails, in class 32, are similar goods to aperitifs and cocktails in class 33.

In E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, it was held that wine and beer can constitute goods of the same description for the following reasons:

• Both are alcoholic beverages distributed by the same major wholesale distributors.
• This particular beer was intended to be an appealing alternative to wine.
• Large producers of alcoholic beverages are no longer confined to beers or wines. They produce a range of products, including beer, wine, spirits, cider and non-alcoholic drinks, and market themselves as such.
• These days wine and beer are often distributed by the same wholesalers and retailers.

Differences such as the manufacturing process of each, the specific manner of sale in restaurants and retail outlets, and the manner in which each is consumed (beer being consumed for its refreshing qualities and wine being consumed in a “sipping fashion”) were considered to be materially less significant. In discussing the specific similarities and differences of the goods, it was also noted: “…it is important to bear in mind that this issue is being considered in the more general context of whether consumers might see the goods as having the same trade origin”.

*A broad claim for ‘non-alcoholic beverages’ in class 32 includes goods such as ‘non-alcoholic cocktails’ or ‘non-alcoholic aperitifs’. These are considered to be similar goods to ‘cocktails’ or ‘aperitifs’ which are encompassed in the broad claim for alcoholic beverages in class 33.

** 'Spirits and/or liqueurs' are not generally considered to be goods of the same description to 'non-alcoholic beverages'.

***Class 32 claims for ‘all goods in class 32’ includes, by default, goods such as very low alcohol and de-alcoholised wines which are considered to be goods of the same description as, or similar to, wines in class 33.

****Alcoholic beverages except beer still includes wine which is considered similar to beer.