FOR IP PROFESSIONALS

Trade mark for wine

Before choosing a trade mark or designing a label under which wine or alcoholic grape products will be imported, exported or sold on the Australian market, you need to be aware of certain requirements and regulations.

The Wine Australia Corporation Act 1980

You should study the Wine Australia Corporation Act 1980 (the WAC Act) and the Wine Australia Corporation Regulations 1981 (the WAC Regulations) prior to lodging an application for registration of a trade mark in Class 33, which is to be applied to wines or alcoholic grape products.

Powers to declare conditions of use in relation to registered geographical indications or other terms

The WAC Act empowers the WAC to determine conditions of use for registered geographical indications and other terms. These conditions of use are recorded in the Register of Protected Geographical Indications and Other Terms and may affect Class 33 trade mark applications. The conditions will apply to any trade mark applied for in respect of wines or alcoholic grape products, if the trade mark includes the particular geographical indication or other identified protected term.

False or misleading description or presentation of wine or alcoholic grape product

Substantial penalties of up to two years jail and a large fine may be incurred for false or misleading description or presentation of wine or alcoholic grape products. This may involve improper use of a registered geographical indication or other protected term appearing on the Register of Protected Geographical Indications and Other Terms.

The Geographical Indications Committee

The Geographical Indications Committee (GIC) of the Wine Australia Corporation determines the names and boundaries of Australia's geographical indications. Criteria for making these determinations are set out in WAC Regulations. As part of the determination of geographical indications, the application is advertised to allow other persons to object on the basis of prior trade marks rights. If the grounds are made out, the GIC cannot determine the geographical indication without the consent of the trade mark owner. Following the publication of a final determination of the GIC, names are entered into the Register of Protected Geographical Indications and Other Terms and protected from that date, in Australia and internationally.

Register of Protected Geographical Indications and Other Terms

The Australian Register of Protected Geographical Indications and Other Terms enables Australia to protect certain wine and alcoholic grape product-related names and expressions including those contained in the EU/Australia Wine Agreement and any other prescribed trading agreements that may be entered into in the future.

The Register of Protected Geographical Indications and Other Terms is located at the offices of the WAC and is also available online. Further information can be obtained by writing to the Registrar of Protected Geographical Indications and Other Terms.

Registration of Class 33 trade marks

It is an offence to use either the name of a country or a registered protected name in a false or misleading way on wine or alcoholic grape product labels.

Before filing an application for registration of a trade mark in Class 33, which includes wines or alcoholic grape products in the specification of goods, you should check whether any name included in the representation of the trade mark is a registered geographical indication or other term. A geographical name on its own is generally not registrable under the Trade Marks Act 1995.

If it appears as part of a registrable trade mark, a condition of use may be required to ensure the appearance of the name in the trade mark will not be misleading as to the product's geographical origin. Some geographical names are already or likely to become registered geographical indications and subject to further conditions of use.

Before filing, you should check whether the trade mark applied for contains or consists of a:

  • geographical name - which may be refused or made subject to conditions of use
  • registered geographical indication - a name already determined for use by Australia and entered in the Register of Protected Geographical Indications and Other Terms
  • registered geographical indication in respect of the member states of the European Union or any other countries with which an agreement on trade in wine or alcoholic grape products has been negotiated
  • name considered likely to be the subject of a future determination by the Geographical Indications Committee of the Wine Australia Corporation and subsequently entered into the Register of Protected Geographical Indications and Other Terms
  • registered quality wine term, or additional  term for use by Australia appearing in the Register of Protected Geographical Indications and Other Terms
  • registered traditional expression or additional term for use by the member states of the European Union or any other countries with whom an agreement on trade in wine or alcoholic grape products has been negotiated
  • name that could be considered a translation of a registered geographical indication, a registered traditional expression , a registered quality wine term, or a registered additional term appearing in the Register of Protected Geographical Indications and Other Terms
  • word or expression that so resembles a registered geographical indication, a registered traditional expression , a registered quality wine term, or registered additional term appearing in the Register of Protected Geographical Indications and Other Terms that it is likely to be mistaken for the registered geographical indication, registered traditional expression, registered quality wine term, or registered additional term.

Where the name or address of a winery is included in the representation of a trade mark applied for in respect of wines or alcoholic grape products, the name or address should not be used in a way likely to mislead as to the country, region, or locality in which the wine or alcoholic grape product originated. Where the trade mark itself consists of words that are registrable, it may assist the progress of an application if just those words, rather than the whole wine label, are lodged as the representation of the trade mark.

More information 

Last Updated: 27/3/2014

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