Foster's Wine Estates Limited v Serafino Wines Pty Ltd

Foster's Wine Estates Limited (the opponent) sought to oppose the registration of a trade mark application by Serafino Wines Pty Ltd (the applicant). The dispute concerned the applicant's attempt to register the trade mark "STEVE MAGLIERI" for use on wine. Foster's Wine Estates argued that this proposed registration infringed upon its existing trade mark rights, particularly those incorporating the name "MAGLIERI," which it acquired through the purchase of Maglieri Wines. The matter was heard by Bianca Irgang, a Hearing Officer at the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether the applicant's proposed trade mark "STEVE MAGLIERI" was deceptively similar to the opponent's registered trade marks, specifically registrations 630850 (MAGLIERI WINES WHEN ONLY THE BEST WILL DO) and 739391 (MAGLIERI), for the purpose of wine sales. This involved an assessment of the grounds of opposition under section 44 of the relevant legislation, which deals with the registration of trade marks that are identical or deceptively similar to earlier trade marks.

The Hearing Officer reasoned that the opponent had successfully demonstrated that its existing trade marks, particularly those incorporating the name "MAGLIERI," were well-established and had generated consistent sales revenue. The opponent's evidence, including statutory declarations and the Agreement for Purchase of Shares, established its ownership and control over the "MAGLIERI" brands. The Hearing Officer found that the opponent had met the onus of proof regarding the grounds of opposition under section 44. Consequently, the Hearing Officer refused to register the applicant's trade mark application. The Hearing Officer also ordered that the unsuccessful applicant, Serafino Wines Pty Ltd, pay the costs of the proceedings.