Before filing a trade mark application for any goods/services, it is important to assess a number of issues to ensure that the proposed mark is likely to be available for use and registration.
For wine brands, the standard trade mark provisions apply, but there are also additional requirements/considerations relating specifically to the wine industry.
Following is a general checklist of key questions to consider before filing a trade mark application for a wine trade mark:
- Is the proposed trade mark sufficiently “distinctive” (unique) to be registrable?
This will depend on whether other wine businesses are likely to legitimately need to use the proposed mark. Consider:
- Does the proposed mark consist of a word(s) that is used in the wine industry for descriptive purposes? Descriptive words that refer to the characteristics or qualities of wine are likely to be difficult to register.
- Does the proposed mark consist of a surname? Surnames are likely to be difficult to register as the use of surnames in the wine industry is common.
- Does the proposed mark consist of a geographical name that relates to an existing grape growing region, or the name of a region that could become a grape growing area due to its location and climate? Geographical names that have a connection, or a potential connection, to a grape growing area (in Australia or overseas) are likely to be difficult to register.
- Are there already existing similar marks that may pose an obstacle?
It is important to conduct pre-filing searches to check whether anyone else has already registered or is using a similar mark. Search the Australian Trade Marks Register at https://search.ipaustralia.gov.au/trademarks/search/advanced and also conduct general searches of the internet, company/business name registrations and wine listings. Consider:
- Are there existing marks that are identical, or similar, to the proposed mark? Whether two marks will be considered confusingly similar will depend on how the marks look visually as well as how they sound aurally.
- Check for existing marks that cover wine as well as related goods and services. Wine falls in class 33 on the Trade Marks Register. Other alcoholic beverages including spirits also fall in class 33. Beer and alcohol-free wine fall in class 32.
- Will the use of the proposed mark comply with the requirements of the Wine Australia Act?
The Wine Australia Act protects Australian and European wine geographical indications (“GIs”), traditional expressions and quality wine terms, as listed on the Register of Protected Geographical Indications and Other Terms. See: https://www.wineaustralia.com/labelling/register-of-protected-gis-and-other-terms.
As examples, the Australian Trade Marks Office will raise an objection against an application covering wine if the trade mark incorporates as part of the mark:
- a protected Australian GI such as BAROSSA VALLEY, MARGARET RIVER, RUTHERGLEN, YARRA VALLEY, HUNTER VALLEY;
- a protected European GI such as BURGUNDY, CHABLIS, CHAMPAGNE, SANCERRE, MOSEL, BAROLO, CHIANTI CLASSICO, PORT and CAVA, RIOJA.
This type of objection can be addressed if the applicant consents to a condition being entered on the Trade Marks Register as follows:
It is a condition of registration that the trade mark will only be used under the conditions entered on the Register of Protected Geographical Indications and Other Terms for use of [eg. the Geographical Indication BAROSSA VALLEY] and that the use will accord with the Wine Australia Act 2013.
In addition, the Australian Trade Marks Office may raise an objection if the proposed mark incorporates any geographical name (in Australia or elsewhere) if it is considered that use of that geographical name on wine not produced from that area would cause deception or confusion. Once again, such an objection can be addressed if the applicant consents to a condition like the above being entered on the Register.
(The proposed mark as a whole will also still need to be considered sufficiently “distinctive” and not conflict with any existing marks, as outlined above, in order to be registrable.)
Fast-track option
As the answer to some of the above questions can be subjective, an option that may be worth consideration is to file an application for the proposed mark through the fast-track “headstart” system. Headstart applications are assessed within 5-10 days (sometimes even sooner) and so we can find out very quickly whether any objections based on any of the above issues are likely to be raised. Once headstart results are issued, there will then be a further 5 day period to consider any objections and decide whether or not to proceed with formally filing the application.
