32B.2.2 Section 43: Deception and Confusion

Where a trade mark includes a geographic reference, regardless of whether this reference is a known geographical indication or not, a section 43 ground for rejection should be considered on the basis that the reference denotes a particular location, and when applied to the goods and / or services claimed, the connotation associated with the reference is likely to deceive or confuse the relevant consumer. For example, a geographical reference can connote that:

• The grapes are grown at that location or within that region;
• The wine is produced (bottled, packaged, distributed) from that location or within that region;
• Wine produced at that location or within that region is also sold at that location. For example a cellar door.

The section 43 assessment should take into account the relevance or connection that a geographical reference has to the goods and / or services claimed. If a geographical reference is included, but also has other meanings and / or associations, this should be taken into account as part of assessing whether there is a real likelihood of deception or confusion. The geographical reference should be obvious, direct and immediate within the trade mark and the connotation should stem from the secondary meaning (e.g. the consumer’s perception of an attribute of that place in relation to the goods and / or services).

For example, Berry is the name of a place in NSW (located within the Shoalhaven Coast geographical indication), a common Australian surname and the name of a fruit. The manner in which this geographical reference is included as part of a trade mark, whilst also taking into account any other written or visual features that have been included, will influence consumer perception and connotation.

Overcoming a section 43 ground for rejection that has been raised

To overcome this ground for rejection the applicant may wish to consider:

• Refining the specification. For example:

Trade mark:

Okey Dokey Wines Tanunda

Class 33 - Wine

Specification refined to:

Class 33: Wine produced in Tanunda

OR

Class 33: Wine made from grapes grown in Tanunda

• Applying a condition of registration, appearing as an endorsement. For example:

Trade mark:

Okey Dokey Wines Tanunda

Class 33 – Wine

It is a condition of registration that the goods specified within the application are produced in Tanunda

OR

It is a condition of registration that the wine goods claimed within the application are from grapes grown in Tanunda, bottled into wine within the Tanunda region.