Wine Labels – Legal Wars On Infringement of Trade Marks

With the beginning of 2017, the wine industry in Australia has got two landmark judgments on issues of trademarks and infringement of rights. One of these has been delivered by the Federal Court of Australia and another by a Chinese court. Let us discuss these one by one.

The Signature Vs Barossa Signature

It was in September 2015 that Pernod Ricard launched its ‘Barossa Signature’ line under the Reserve sub-brand of the Jacob’s Creek brand. This led to initiation of the infringement case by Samuel Smith & Son who already had ‘THE SIGNATURE’ line registered under Class 33 in September 1999. Samuel Smith & Son argued that ‘Barossa Signature’ from Pernod Ricard was deceptively similar to ‘The SIGNATURE’.

However, the Federal Court considered three aspects of this dispute in deciding the case:

1. Usage of ‘Barossa Signature’ as a Trade Mark within the meaning of Trade Marks Act, 1995 (Cth) (section 17).
2. Whether there is deceptive similarity between the two under section 120(1) of the Act.
3. In case existence of deceptive similarity is established, whether defence of geographic indicators under infringement proceedings is available to Pernod Ricard or not under section 122(1)(b)(i).

The ruling given out was that though Pernod Ricard had used a distinctive part of the Yalumba brand name, the way it has been used is not likely to create deception.

The key points to be noted from this ruling are that assessment of ‘deceptive similarity’ will be based on impression created in mind of consumer and that the evidence of sales will not be sufficient alone to establish the reputation.

TWE Vs Ben Fu

In China, the Treasury Wine Estates (TWE) has won a legal battle against Ben Fu which is the Chinese translation of the Penfolds brand of TWE. It was the People’s High Court in Beijing which passed the decision that owner of Ben Fu has not demonstrated any genuine use of this trademark for wines or any other related business activities.

It is notable that Penfolds has a presence of more than 25 years in the Chinese market and is one of the top established brands in Chinese market.