32B.2.3 Section 41: Capacity to Distinguish

Trade Marks Act 1995

Trade Mark Regulations 1995

Wine Australia Act 2013

As discussed in Part 22, the Registrar must be satisfied that the trade mark as a whole is capable of distinguishing the goods or services claimed. While wine trade marks are no different in this respect, there are some issues peculiar to these types of trade marks that examiners should be aware of.  

The appearance of a protected term from the AGWA Register in a trade mark will give rise to careful consideration whether a section 41 ground for rejection applies – particularly if that protected term is the main identifying feature of the trade mark.  Some examples are discussed in the following.

2.3.1 Protected terms in trade marks

The existence of a protected term on the AGWA Register establishes that the word is most apt for describing a particular wine and is very likely to be required by other traders in relation to that wine.  Therefore, if the application is for a trade mark consisting entirely of a protected term, it will have no inherent adaptation to distinguish and will attract grounds for rejection under section 41(6) or 41(3) for trade mark applications with a filing date on or after 15 April 2013.

GREATER PERTH VINTAGE

In this example, GREATER PERTH is a GI, confirming its relevance as a reference to the geographical origin of the goods.  In addition, VINTAGE is a QWT, confirming its relevance as a reference to wine quality.  As merely a reference to origin and quality, the trade mark as a whole has no inherent adaptation to distinguish and will attract grounds for rejection under section 41(6) or 41(3) for trade mark applications with a filing date on or after 15 April 2013.

Trade mark applications incorporating protected terms together with other features that are adapted to distinguish, may not result in a ground for rejection under section 41(6) or 41(3) for trade mark applications with a filing date on or after 15 April 2013.

The usual tests and considerations as discussed in Part 22 will need to be taken to determine the extent to which the trade mark as a whole is adapted to distinguish.

2.3.2 Geographic locations in trade marks

Trade mark applications containing geographical locations as a main identifying feature where that geographical location is a known wine growing area will face a section 41 ground for rejection.

LEETON WINE

In this example, LEETON is not a GI – but it is located within the “Big Rivers” GI where there are a number of vineyards.  LEETON WINE has no inherent adaptation to distinguish wine products and would face a ground for rejection under section 41(6) or 41(3) for trade mark applications with a filing date on or after 15 April 2013.

2.3.3 Descriptive words which are common to the trade

The wine industry has many terms which are in common use and add very little if any inherent adaptation to distinguish the trade marks in which they are used.  Some of them are also protected terms (e.g. VINTAGE is a QWT).  Examples of such words common to the trade are:

ESTATE

WINES

BLEND

CELLARS

BIN

WINERY

VINEYARD

VINTAGE

RANGE

2.3.4 GIs and geographic locations in composite trade marks

GIs and geographic locations may appear in composite trade marks. Such trade marks are subject to the normal tests for capacity to distinguish. If the other elements in the trade mark are capable of distinguishing the goods of the trader from those of other traders, such as those below, they are likely to be acceptable in relation to section 41. However, examiners should be aware of any other grounds for rejection that are applicable.  For example, a search of the AGWA Register may indicate a ground for rejection under section 42.

2.3.5 Other section 41 grounds for rejection which are not geographic names

As with non-wine trade marks, geographic names or locations are not the only considerations under section 41. Other words such as the names of cocktails, colloquial names of alcoholic beverages or terms that are descriptive in the industry must be considered. Examples are:

Cocktails – “Painkiller”

Colloquial names – “The Green Fairy” (absinthe)

Descriptive terms in the industry – “Funky” (a derogatory term describing wine with a bad taste)

2.3.6 Cocktails

Cocktails consist of a mixture of alcoholic and non-alcoholic beverages and are often given fanciful names.

Some cocktail names are widely known even amongst non-drinkers, and have no capacity to distinguish alcoholic beverages or their non-alcoholic equivalents, e.g. Manhattan, Martini, Cosmopolitan, and Margarita. Other cocktail names are less well-known amongst the public, but are nevertheless common to the trade and/or would be known amongst a significant number of consumers who regularly order cocktails, or make cocktails at home.

Whether a cocktail name has an ordinary signification amongst Australian consumers, giving rise to grounds for rejection under s 41, will depend on the results of research in each particular case.

Some cocktail names are coined by individuals who claim to have invented a recipe, or have only local significance in a particular geographical area. The presence of a cocktail recipe on the Internet, or the fact that a small number of traders somewhere in the world may offer a cocktail under a particular name, will generally not be sufficient justification for raising grounds for rejection under s 41. 

The questions that ultimately needs to be resolved is whether the sign has an ordinary signification as a name of a cocktail to traders and/or consumers in Australia, and whether because of this signification, use of the trade mark would be likely desired by other traders in connection with their similar goods or services.

When considering a s41 objection for cocktail names, research will need to be conducted to identify a consistent pattern of cocktail references or recipes from relevant sources including, but not limited to, articles from reputable publications, active discussion in public forums regarding cocktails and cocktail recipes and presence in the Australian mixology industry (e.g. references in bar menus). Information on websites that merely list cocktail names or recipes submitted from any source will need to be treated with caution, as the presence in such a list does not necessarily equate to ordinary signification in Australia.

Evidence of use of a cocktail name in Australia by multiple traders or in multiple reputable sources is generally the most persuasive evidence supporting grounds for rejection. However, evidence of use of a cocktail name internationally, particularly in well-known mixology literature, would also tend to indicate that a cocktail name has an ordinary signification in the trade in Australia. Similarly, the widespread use of a cocktail name across multiple countries frequented by Australians would also tend to indicate that a cocktail name has an ordinary signification amongst Australian consumers, given the ease with which such terms enter the public consciousness and migrate jurisdictions.  The consistency of recipes/ingredients for a particular cocktail is also another factor which may assist in determining whether it has an ordinary signification.

It may also be appropriate to raise grounds for rejection against a cocktail name for a spirit or other beverage where that product is a substantial ingredient of the cocktail in question.

This is because in some cases, the ordinary signification of the cocktail name in relation to a particular constituent ingredient will be to indicate that it is suitable for use in that cocktail. This is more likely in relation to ‘iconic’ cocktails (for example, Mojito, Martini, Cosmopolitan etc). However, such an objection may not be appropriate in relation to cocktail names that are less well known, particularly those that have another meaning. In such cases, it may be difficult for the Registrar to be satisfied that the ordinary signification of the name amongst those who trade in or consume the goods would be a reference to the cocktail.

2.3.7 Names of roads along which several wineries are located

If the trade mark consists of the name of a road or street, etc within a wine growing region consideration should be given to the need for other traders to use the name of the road or street, etc on which they are located as an ordinary description of their goods.  As with such trade marks for other goods (see part 22.15.7) examiners should consider the ordinary signification of the trade mark and treat such trade marks like any other geographical name.

On that basis, if the road has a reputation or potential reputation for the production of wine, it is likely that a section 41 ground for rejection will exist. Consideration will need to be given not just to existing wineries or vineyards along that road, but the likelihood that more wineries or vineyards would be established along it in future.