Last month, the Federal Court handed down its decision in Samuel Smith & Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd  FCA 1515, finding in favour of Pernot Ricard Winemakers Pty Ltd, owner of the wine brand “Jacob’s Creek”.
The Applicants (referred to jointly as the South Australian wine brand “Yalumba”) claimed that by using the sign BAROSSA SIGNATURE on its labels to promote and sell its products, Pernod Ricard had infringed Yalumba’s registered trade mark THE SIGNATURE.
By way of background, the Respondent’s wine sub-brand, Jacob’s Creek Reserve, released three red wines in 2015 with the sign BAROSSA SIGNATURE featuring on the label. Yalumba filed evidence that it had used its mark THE SIGNATURE, in respect of red wines, since the 1970s.
In this matter, the Court considered deceptive similarity along with the Respondent’s arguments that BAROSSA SIGNATURE had only been used descriptively and to indicate the product’s geographic origin. In dismissing the matter, Her Honour emphasised three key issues, namely:
- Whether the Respondent used the sign “BAROSSA SIGNATURE” as a trade mark under section 17 of the Trade Marks Act 1995 (“the Act”);
- Whether the sign BAROSSA SIGNATURE is deceptively similar to the registered trade mark THE SIGNATURE under section 10 of the Act; and
- If yes to the above, whether the Respondent used the BAROSSA SIGNATURE trade mark in good faith under section s 122(1)(b) of the Act.
The Respondent argued that the sign BAROSSA SIGNATURE was merely descriptive of its wine sub-brand. Her Honour disagreed, finding that BAROSSA SIGNATURE was not a normal combination of words that would be used in the wine industry and therefore served as a “brand personality” of Pernot Ricard, and functioned as a badge of origin. Or, in other words, that BAROSSA SIGNATURE was being used by Pernot Ricard as a trade mark as defined in section 17 of the Act.
Having regard to the question of deceptive similarity, Yalumba contended that the suffix of its trade mark “SIGNATURE” was the distinctive element comprising its mark, and therefore argued that the Respondent’s use of this element in the BAROSSA SIGNATURE mark infringed its rights.
Her Honour agreed that Pernod Ricard has used the distinctive element “SIGNATURE” in its mark, however concluded that this use alone did not satisfy the test for deceptive similarity. In this respect, Her Honour highlighted the importance of the element “THE” in the Applicant’s trade mark, noting that this prefixing element renders the element “SIGNATURE” a noun and suggests that the “signature referred to is a signature of some particular importance”.
Further, the Court considered the idea conveyed by Pernod Ricard’s use of the BAROSSA SIGNATURE mark. Her Honour understood the use of “SIGNATURE” in this mark in an “adjectival sense and not as a noun”, making the mark an unconventional combination of comprising of an “element of grammatical nonsense” that was not present in the Yalumba mark.
For these reasons, Her Honour determined that the mark BAROSSA SIGNATURE was not deceptively similar to the mark THE SIGNATURE and therefore did not infringe the rights of Yalumba under the provisions of the Act.
Her Honour held that Pernod Ricard would not have satisfied the test for good faith, being use “purely for the purposes of description” under section 122(1)(b) of the Act. Accordingly, had the marks been found to be deceptively similar, Her Honour would have allowed Yalumba’s application.
Yalumba did not file an appeal.