Dindima Wines Pty Ltd v Nick Bulleid
[2008] ATMOGI 2
•2 July 2008
AUSTRALIAN WINE AND BRANDY CORPORATION ACT 1980
Objection to determination of geographical indication
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS
Re:Objection by Dindima Wines Pty Ltd to determination of the GI ORANGE FOOTHILLS – applied for by Nick Bulleid.
Delegate: Terry Williams Representation: Objector: Written submissions only
Applicant: Written submissions onlyDecision: 2008 ATMO GI 2
AWBC Act, s 40RB. No trade mark rights, determination to proceed.Background
1. The Australian Wine and Brandy Corporation Act 1980 (the AWBC Act) established the Geographical Indications Committee (GIC), giving it the power to determine, and consequently protect under the AWBC Act, Geographical Indications (GIs) for wines. As part of that process, the Registrar of Trade Marks has limited involvement, to which I will shortly come.
2. Nick Bulleid, on behalf of a group of others, has followed the necessary process for making an application for the GI ORANGE FOOTHILLS. The GIC has publicly advertised this application, for the purposes of section 40RB of the AWBC Act. Dindima Wines Pty Ltd (Dindima) and Cargo Road Wines Pty Ltd have both, separately, filed notices objecting to the determination, as also provided for by s 40RB. Cargo Road Wines Pty Ltd, however, failed to file or serve a copy of any evidence supporting its objection. Per reg 42 of the AWBC Regulations the GIC has already been informed that the objection by Cargo Road Wines Pty Ltd is not made out. I turn, in this decision, to the objection by Dindima.
3. Dindima and the applicant have both filed and served evidence to support their positions. Both sides have had the opportunity to be heard but are content to have the matter decided on the written record. I was assigned to do this, under delegation from the Registrar of Trade Marks.
4. No ground of objection was nominated in the notice of objection. However, there was no reason to infer that the objection was not based on one of the allowable grounds under s 40RB of the AWBC Act. Dindima has since confirmed that the ground on which it relies is “Section 40RB(4)b”. This, however, is part of s 40 RB(4), and functions as part of that whole, which reads:
Trade mark not registered
(4)If a person claims to have trade mark rights in a trade mark that is not registered[1], the person may object to the determination of a proposed GI on one of the following grounds:
[1] Dindima has applied to register the trade mark ORANGE FOOTHILLS. The application lapsed after the examiner of trade marks reiterated the conclusion that:
(b)that:
(i)the trade mark consists of or contains a word or expression; and
(ii)the proposed GI is likely to cause confusion with that word or expression; and
(iii)the person has trade mark rights in that word or expression; and
(iv)the rights were acquired through use in good faith.
5. Dindima objects to the determination of ORANGE FOOTHILLS because it is both visually close to, and indeed contains, an existing GI, ORANGE. Dindima has succinctly summarised its position. I have reproduced this in full as Attachment B with my own observations in brackets. I have full sympathy for Dindima’s strong objection on that basis but, to come to the point, it does not fit within the scope of this part of the legislation, and for good reason.
Objection considered
6. The AWBC Act contains an objection process that allows for objections based on prior-existing trade mark rights. The objection process under that provision is intended for the recognition and protection of trade mark rights. It does not go beyond this and is not a process for the administration of consumer protection in general by the avoidance of confusion between GIs, or for the protection of business interests that involve things other than trade mark rights. The adoption of GIs is otherwise a matter for the careful deliberation of the GIC under sections 40S to 40X[2], but the Registrar of Trade Marks plays no part in that process. Her role is separate, and extends only to the determination of objections such as the present (section 40RB to 40RE, with the Federal Court having jurisdiction on appeal, section 40RF).
[2] Thus, for instance, section 40T(3)(b) allows the GIC to determine a different name for the GI. The determination is subject to public consultation under s 40V. Likewise, s 40Y allows review, in the Administrative Appeals Tribunal, of the determination the GIC.
7. The onus is on Dindima to establish a ground of objection. Unless it can do so, it would not be the responsibility of the applicant to justify the determination of the GI for the purposes of sections 40 RB to RF.
8. Clearly, Dindima has the right to use Orange on its labels as a descriptor in relation to wines that meet the requirement for the use of the GI in question. Dindima, or a predecessor in its business, has done so since 1996. The NSW government and others have collectively funded the BRAND ORANGE marketing campaign to “raise the profile of Orange wine among the wine-buying public”. Thus, as Dindima notes, any other maker of wines that originate in the area defined by the GI would have the same right.
9. What is at issue, here and now, depends firstly on the existence of trade mark rights accruing to Dindima in respect of the word Orange. Dindima’s ground can succeed only if it can establish that, in terms of sub-para (iii) above, “the person has trade mark rights in that word or expression.” Dindima is, unfortunately, mistaken about the scope of the rights that it has accrued in respect of its usage of the word Orange.
10. Dindima’s evidence sets out prior conflicts between the existence of the GI ORANGE and the use (by others) of trade marks incorporating the word ORANGE. That sheds no light at all on the existence of any trade mark right Dindima may have in ORANGE. In any case, the view advocated by Dindima has been overtaken by history. It is simply not the case that the existence of ORANGE as a GI would necessarily preclude the use of trade marks which contain that word but are used on wines not originating from the GI. I refer, here, to the decision of Hearing Officer Thompson in relation to the trade mark FEET FIRST, found not to be in conflict with FIRST, a protected GI. See Appn by Ross & Veronica Lawrence [2005] ATMO 69.
11. Those things, however, are not particularly relevant to the present objection. Dindima can have acquired trade mark rights in ORANGE only if ORANGE has become a trade mark. Section 4A of the AWBC Act sets out definitions for terms as diverse as “wine grapes” and “industry”. It imports the relevant definition of “trade mark” from the Trade Marks Act 1995. Section 17 of the latter reads, my emphasis:
What is a trade mark?
17. A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note: For sign see section 6.
12. The heart of Dindima’s case would require that it had used the word Orange to distinguish its goods from other wines, including those that originate in the Orange GI. This has not been the case. Dindima uses Orange on its labels for precisely the same purpose as its predecessor, see attachment A. However, this is also the same way the term would be used on any other wine originating within the ORANGE GI. The use of “Orange” in that way cannot distinguish Dindima’s wines from those of others entitled to use ORANGE as a GI. By definition, therefore, that use is not trade mark use. Accordingly, and almost paradoxically, while Dindima may have used “Orange” on its labels, and may continue to do so, it has no trade mark rights in that term because it is not a trade mark.
Conclusion
13. Dindima’s objection has therefore not been established. I intend, after the end of the appeal period, to inform the Presiding Member of the GIC accordingly. Further consideration of this GI would then remain the responsibility of the GIC under section 40SA and following.
T. E. Williams
Hearing Officer
2 July 2008
Attachment A
Attachment B –Summary of Dindima’s objection.
The reasons for the decision to choose the name Orange Foothills have not been satisfactorily justified. In fact the proposers contradict their own criteria for choosing a name. It fails all their tests or "ideals".
[The AWBC Act does not require such an explanation. Whatever the selection criteria applied by the applicant, it is the end result that counts. The suitability of the present GI for use is a matter for the GIC, save as regards to the existence of trade mark rights accruing to Dindima.]
The marketing considerations offered, with the exception of the issue of "conflict with a current GI name", have no relevance to the AWBC Act as it stands.
[See above]
It has not been established that the words "Orange Foothills" have been in the public domain since 19th November 2002.
Here Dindima refers to dissatisfaction with the process of disclosing, to what it sees as adversely affected parties, the intention to create a GI of ORANGE FOOTHILLS.
The examples of current GI's presented do not provide precedents for the same name to be used for GI's within a Zone, as is alleged.
This again is a matter between the GIC and the applicant.
It is acknowledged that there would be opposition to the use of the word "Orange" from those in the Orange GI.
The applicants are attempting to infringe the rights already in existence of growers and winemakers in the Orange GI and to trade on their existing reputation.
There is a lack of understanding that the GI name used for a wine is defined strictly by the AWBC Act not by local marketing practices.
It would not be "mutually beneficial" for the two Regions to share the name Orange. It would confuse and undermine the public perception of the Orange GI's uniqueness.
The AWBC Act and the Australia-EU Agreement are premised on each GI as defined and registered being distinctly different from any other GI. Having similar names undermines that premise.
[These issues are not a concern of the present process, for reasons that I have already set out in my decision.]
“The definition of FOOTHILLS is hilly land on the lower slope of mountains. Thus ORANGE FOOTHILLS would naturally refer to this type of feature near ORANGE which is a wine growing and agricultural region. Thus your trade mark lacks the capacity to distinguish because it is one that other traders should be able to use in connection with goods similar to yours”.
For my purposes here, there is no evidence that Dindima has ever used ORANGE FOOTHILLS as a trade mark.
0