25 November, 2017
Samuel Smith and Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd [2016] FCA 1515
What you need to know
The Federal Court dismissed a claim by the owners of the YALUMBA wine brand (Yalumba) that Pernod Ricard (owner of the JACOB'S CREEK wine brand, Ricard) had infringed Yalumba's trade mark THE SIGNATURE (the Yalumba Mark) by using BAROSSA SIGNATURE on its wine labels and promotional material.
Justice Charlesworth held that Ricard had used BAROSSA SIGNATURE as a trade mark, but this use did not infringe Yalumba's rights under the Trade Marks Act 1995 (Cth) (the Act), as BAROSSA SIGNATUREwas not deceptively similar to THE SIGNATURE.
This case illustrates that signs including descriptive features can still operate as trade marks where they are presented in an unconventional or unusual way. When assessing whether signs have been used "as a trade mark" in the requisite sense, a party's subjective intention in adopting and using the mark, whilst relevant, is not determinative.
The case also reiterates that an assessment of deceptive similarity involves consideration of the impression created by the distinctive elements in the respective signs. For word marks, it is relevant to consider whether the words are being used in a nominal, adjectival or "invented" manner.
Background
THE SIGNATURE has been registered as a trade mark since 1999 for goods including table wine. The Yalumba Mark had been used for at least 20 years prior to registration, and continues to be used in relation to premium wines. Since at least 2000, Yalumba had sold approximately 60,000 bottles of wine per year under the brand, at a current retail price of $60 per bottle.
In September 2015, Ricard began producing and selling three red wine products bearing the words BAROSSA SIGNATURE, as part of a "sub-range" of Ricard's "JACOB'S CREEK RESERVE" label. These products were also promoted using the words "BAROSSA SIGNATURE" on Ricard's website, and printed promotional material. The RESERVE range retails at around $15 and $25 per bottle; the BAROSSA SIGNATURE range retails at around $2 per bottle more than the RESERVE collection.
Use as a trade mark
Ricard argued that it had not used the words BAROSSA SIGNATURE to indicate the trade origin of the products to which the words were applied. Rather, Ricard submitted that the words were descriptive of the goods and would not be understood by consumers as being characteristic of a brand.
This argument was rejected by the Court. Justice Charlesworth considered that although the word "SIGNATURE" is common in wine parlance, Ricard was not using the word in its ordinary adjectival sense or as a descriptor of wine. Her Honour also noted that although the word "BAROSSA" is a known indicator of wine from the South Australian wine region, the words combined as BAROSSA SIGNATURE are not commonly used to describe wine, and their "unusual combination" created the impression of "a softly spoken slogan".
Thus Ricard's use amounted to trade mark use.
This conclusion was supported by her Honour's finding that BAROSSA SIGNATURE had particular prominence on Ricard's labels and promotional materials, and would be understood by wine consumers to form part of the "brand personality" of Ricard.
Ricard also sought to adduce evidence of its subjective intentions in adopting the words BAROSSA SIGNATURE. Whilst this evidence was admissible, it was afforded little weight in determining this issue.
Deceptive similarity
Yalumba contended that the two marks were deceptively similar due to the commonality of "SIGNATURE" as a distinctive component of both marks. It submitted that it had developed a significant reputation in the word "SIGNATURE" through its extensive use of the Yalumba Mark, such that consumers would be caused to wonder if Ricard's goods originated from the same source.
Justice Charlesworth considered that there was insufficient evidence demonstrating the notional wine consumer's degree of familiarity with the Yalumba Mark. Her Honour held that Yalumba's use of the word "SIGNATURE" along with the definite article "THE" presented the mark in its nominal form and creates the impression of importance. By contrast, Ricard's use of BAROSSA SIGNATURE possessed an element of "grammatical nonsense". Accordingly, although Ricard used a distinctive element of the Yalumba Mark, as BAROSSA SIGNATURE was an invented combination, and visually and aurally dissimilar, the Court considered that consumer confusion was unlikely. Thus the marks were not deceptively similar.
Good faith use indicating geographic origins
In the event that it was found to infringe the Yalumba Mark, Ricard sought to rely on the defence under s 122(1)(b)(i) of the Act, namely, that it had used BAROSSA SIGNATURE in good faith purely for the purpose of indicating that its wines were "characteristic" of wines produced from the Barossa region.
Although determination of this ground was not required (as Ricard had not infringed the Yalumba Mark), her Honour considered that the evidence demonstrated that Ricard intended to use BAROSSA SIGNATURE as both an indicator of relevant characteristics of the wine, and to distinguish its goods from other traders. Thus, if Yalumba had established infringement, Ricard could not have relied on the defence under s 122(1)(b)(i) of the Act.
For further information please contact:
Peter Chalk, Partner, Ashurst
peter.chalk@ashurst.com
