23 March, 2017
Spruson

Make Wine Pty Ltd v Modern Ancient Brands Pty Ltd [2017] ATMO 17

Make Wine Pty Ltd v Modern Ancient Brands Pty Ltd [2017] ATMO 17

This matter concerned the opposition by Make Wine to the removal of its trade mark registration of the QUEEN ADELAIDE Label.  Modern Ancient Brands had applied to remove the registration of the QUEEN ADELAIDE Label on the basis of non-use.

Relevant to the matter, is that the QUEEN ADELAIDE Label contains the word ‘WOODLEY’ and Modern Ancient Brands holds a pending application for the trade mark WOODLEY in relation to wine.

From the evidence filed, it was clear that no wines had been produced bearing the QUEEN ADELAIDE Label since around 2005, with the last vintage appearing to be from 2002 or 2003.  However, Make Wine was able to locate, and included in its evidence, sales of its QUEEN ADELAIDE Label branded wines during the relevant period, which were, in fact, older bottles of wine that had been stored and then on-sold by unrelated third parties.

In evidence, there were some 12 bottles of wine sold by third parties in that manner with the cost per bottle being around $2-$3 each.  In the hearing officer’s view, the low price obtained for the wines reflected that it was unlikely that “the wine was initially purchased for the purpose of investment or future resale”.  This, in turn, led the hearing officer to conclude that these sales did not constitute ‘use’ of the trade mark by Make Wine in the ‘course of trade’.

Having made that determination, the hearing officer then turned to the issue of the exercise of the Registrar’s discretion.  In Make Wines favour, the hearing officer noted that Make Wines has a “significant and enduring reputation in its QUEEN ADELAIDE [Logo] branded wines”.  Further, Make Wines is currently selling QUEEN ADLEAIDE branded wines under an updated label, which is being purchased by Australian consumers.  In the hearing officer’s view, the applicant has “an active and ongoing reputation in its QUEEN ADELAIDE branded wine”.

The above factors were sufficient for the hearing officer to exercise the Registrar’s discretion in relation to all of the goods covered under the QUEEN ADELAIDE Label trade mark.  So, the registration is to remain on the Register for all of the goods covered thereunder.v

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.


TRACEY BERGER

Principal / Trade Mark Attorney
Trade Marks Team
Sydney, Australia
DanielWilson_2015_370x270

DANIEL WILSON

Associate / Trade Mark Attorney
Trade Marks Team
Sydney, Australia

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