Trade mark for wine


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

The Australian Wine and Brandy Corporation Act 1980

You should study the Australian Wine and Brandy Corporation Act 1980 (the AWBC Act) and the Australian Wine and Brandy Corporation Regulations 1981 (the AWBC Regulations) prior to lodging an application for registration of a trade mark in Class 33, which is to be applied to wines.

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

The AWBC Act empowers the AWBC to determine conditions of use for registered geographical indications and other identified wine names. These conditions of use are recorded in the Register of Protected Names and may affect Class 33 trade mark applications. The conditions will apply to any trade mark applied for in respect of wines, if the trade mark includes the particular geographical indication or other identified wine name.

False or misleading description or presentation of wine

Substantial penalties of up to two years jail and a large fine may be incurred for false or misleading description or presentation of wine. This may involve improper use of a registered geographical indication or other wine name appearing on the Register of Protected Names.

The Geographical Indications Committee

The Geographical Indications Committee (GIC) of the Australian Wine and Brandy Corporation determines the names and boundaries of Australia's geographical indications. Criteria for making these determinations are set out in AWBC 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 Names and protected from that date, in Australia and internationally.

Register of Protected Names

The Australian Register of Protected Names enables Australia to protect certain wine-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 Names is located at the offices of the AWBC and is also available online. Further information can be obtained by writing to the Registrar of Protected Names.

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 labels.

Before filing an application for registration of a trade mark in Class 33, which includes wines in the specification of goods, you should check whether any name included in the representation of the trade mark is a registered protected name. 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 protected names 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 Names
  • 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 has been negotiated
  • name considered likely to be the subject of a future determination by the Geographical Indications Committee of the Australian Wine and Brandy Corporation and subsequently entered into the Register of Protected Names
  • registered traditional expression or registered ancillary protected expression for use by Australia appearing in the Register of Protected Names
  • registered traditional expression or registered ancillary protected expression for use by the member states of the European Union or any other countries with whom an agreement on trade in wine has been negotiated
  • name that could be considered a translation of a registered geographical indication, a registered traditional expression or a registered ancillary protected expression appearing in the Register of Protected Names
  • word or expression that so resembles a registered geographical indication, a registered traditional expression or a registered ancillary protected expression appearing in the Register of Protected Names that it is likely to be mistaken for the registered geographical indication, registered traditional expression or registered ancillary protected expression.

Where the name or address of a winery is included in the representation of a trade mark applied for in respect of wines, 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 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.

Links

Australian Wine and Brandy Corporation

Last Updated: 18/8/2011