Application for a shape trade mark for a bottle of wine with a blank label (shown below) filed by Delegat’s Wine opposed by four of Australia’s largest winemakers under section 41.
The above trade mark was accepted for registration under section 41(5) after evidence of use was filed by the applicant.
The opponent’s submitted that the elements comprising the applicant’s trade mark were common conventional elements used extensively in the wine industry in Australia. It also submitted that the applicant has never used the trade mark, as applied for, as it always uses other elements on its bottles and labels.
In support of its submissions, the opponent led evidence of similar label/bottle combinations being used by other traders in Australia. Based on this evidence the Hearing Officer agreed that the trade mark was not satisfy 41(3) of the act. However, the Hearing Officer noted that this alone is not fatal to an application, if it passes 41(5).
Turning to 41(5), the Hearing Officer upon review of the applicant’s evidence concluded that it has only ever used the trade mark in the following form:
In the summation of the Hearing Officer, ‘the applicant’s evidence simply does not show that its trade mark is being used to distinguish its goods. There is no reason that applicant cannot use one, two or several trade marks together in its advertising or on its packaging. However, the advertisements, promotions and press releases show what Jacob J described in Phillips Electronics NV v Remington Consumer Products Ltd as a ‘limping mark’; that is, the trade mark always accompanied by the well known trade mark OYSTER BAY and other elements such as the bay device, varietal name and phrases.’.
The opposition under section 41 was successful and the application refused.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.
Principal / Solicitor / Trade Mark Attorney
Litigation Team, Trade Marks Team
Associate / Trade Mark Attorney
Trade Marks Team