32B.2.3 Section 41: Capacity to Distinguish

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 as to 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 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.