Redbank Long Paddock Pty Ltd

[2007] ATMO 37

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Application by Redbank Long Paddock Pty Ltd to register application 1031025(33) Redbank.

Delegate:

Iain Thompson

Representation:

Applicant

Ben Fitzpatrick of Counsel, instructed by Madderns.

Decision:

2007 ATMO 37

1. Examiner’s reports recite grounds for rejection under subsection 41(5) and section 43 – discussion of inter-relationship of grounds – trade mark accepted for possible registration.

Background

1. This trade mark application proceeds in the name of Redbank Long Paddock Pty Limited (‘the applicant’) and seeks registration in Australia of the following trade mark:

   Appn No:  1031025

   Priority Date:  23 November 2004 (‘the relevant date’)

   Goods/Services:              Class: 33  Wines

   Trade Mark:  REDBANK

   (‘the trade mark’)

2. An examiner has reported grounds for rejection in terms of sections 41 and 43 of the Trade Marks Act 1995, in the following terms:

   Your trade mark consists of the word REDBANK.  This is the name of a town in the Pyrenees area of Victoria, a well known wine producing area.  There are seven wineries already established within a 10km radius of REDBANK. 

   There is a very strong likelihood of other traders wishing to use REDBANK to indicate the origin of their goods.  These traders should be able to use REDBANK in connection with goods similar to yours.

   Your trade mark consists of the word REDBANK which is the name of a town in a well known wine growing area. It is likely that purchasers of your goods would be confused or deceived about the origin of your goods if the goods did not come from that area.

3. In relation to the section 43 ground, the examiner offered to withdraw the objection if the applicant consented to the following endorsement as a condition of registration:

   It is a condition of registration that the trade mark will only be used in respect of wines produced predominantly from grapes grown in the REDBANK area.

4. The examiner attached a map of the Pyrenees wine growing area which is in the Victorian Central Goldfields area.  This map shows a population centre called Redbank, and, as the examiner observed, his “research indicates there are currently seven wineries already established within a 10km radius of the town of Redbank.”

5. The applicant provided evidence of it’s (or a related company’s) use of the trade mark which it submitted addressed these concerns.  However, the examiner maintained that the grounds remained and – after a fifth adverse report – the applicant requested to be heard.

6. As a delegate of the Registrar of Trade Marks, I heard the submissions of the applicant at a hearing in Melbourne on 4 June 2006.  Ben Fitzpatrick, of counsel, instructed by Madderns of Adelaide represented the applicant.

   Evidence

7. The following summary comprises the statutory declarations filed in relation to this application:

Declarant	Position	Date made	Exhibits
Robert Wyndham Hill Smith	Director of Samuel Smith & Son Pty Ltd	28 January 2006	RWHS1-RWHS7
Bradley Eric Morris Collings	Group Commercial Manager of Samuel Smith & Son Pty Ltd	16 February 2007	BEMC1-BEMC9
William M Anderson	Director & part owner of Pyrenees Estate Wines	1 March 2007
Graeme Francis McDonough	Director of Redbank Long Paddock Pty Ltd	1 June 2007
Bradley Eric Morris Collings	Group Commercial Manager of Samuel Smith & Son Pty Ltd	4 June 2007	BEMC10
Andrew James Gordon Pirie	CEO & Chief Winemaker of Tamar Ridge Estates	26 April 2007
Tony Leon	General Manager of Dan Murphy's
Jeffrey Charles Burch	Chief Executive Officer of Howard Park Wines Pty Ltd, Wine Taster	15 February 2007
Patrick George Kendler	Wine columnist, The Herald Sun (Victoria)	16 February 2007
Hugh Caillard	Managing Director of Langton’s, Sydney
Stephen Couche	Executive Director of Pernod Rickard Pacific Srl	22 February 2007
Mario Barletta	Director of Australian Lorraine Wines Pty Ltd	24 August 2007
Robert Victor Edwards	Commercial Director of Peter Lehmann Wines Limited	1 March 2007
Sandro Mosele	General Manager of Koyong Winery	1 March 2007
Stephen Shelmerdine	Managing Director of Shelmerdine Vineyards	2 March 2007	Attachment A
George Doukas	Manager Castlecrag Wine Cellars	15 August 2006
Andy Dennis	Owner Northshore Liquor	15 August 2006
Kelly Wyatt	Member of Public	23 July 2006
Frederick Graham Hamood	Liquor Shop owner, President of South Australian Liquor Stores Association	26 July 2006
Anthony D'Anna	Fine Wine Buyer for Boccaccio Cellars	25 August 2006
Thomas John Passaro	Member of Public	22 July 2006
Mark Lines	Member of Public	22 July 2006
Jessica Passaro	Member of Public	22 July 2006
Luke Passaro	Member of Public	23 July 2006
Dorothy Lean	Manager of Bottle shop at AB Hotel, Glebe	15 August 2006

1. With the exception of Mr Anderson, Mr Pirie and those below his name in the table above (with the exception of the members of the public identified therein) provide what may be termed ‘trade declarations’. 

2. Mr Smith is a Director of the company Samuel Smith & Son Pty Ltd, a position which he has held for approximately 22 years.  Samuel Smith & Son Pty Ltd owns and controls the applicant which was incorporated in 1993.  Mr Smith explains:

   In the late 1970s the name "Redbank" was adopted as a trade mark in respect of wines produced by Neill and Sally Robb (the "Robbs"), the proprietors of a winery which operated under the name Redbank Winery. The winery was named after the small town of Redbank in north-western Victoria and near to which the winery was and still is located. The name "Redbank" was used continuously by the Robbs as a trade mark in respect of wines from the late 1970s to September 2000 at which time they relinquished their rights in the name to my company. Annexed hereto and marked with the letters RWHS1 is a copy of an information booklet which was printed many years ago and which provides a brief history of the Redbank Winery owned by the Robbs.

   The mark "Redbank" was used by the Robbs either alone or in association with other sub-brands including "Sally's Paddock" and "Long Paddock". Annexed hereto and marked with the letters RWHS2 are copies of some old product literature used by the Robbs to promote their wines as well as copies of a number of their wine labels which were used during the period 1979 to 2000. The wines sold by the Robbs under the "Redbank" name were not always produced from grapes grown in the area of the town of Redbank. Out of necessity, for example, due to drought or shortage of supply, grapes were sourced by the Robbs outside of the area of Redbank, for producing their wines so as to satisfy demand. The wine sold under the "Redbank Long Paddock" label, in particular, evolved as a multi-regional blend.

   To the best of my knowledge and belief, the Redbank Winery established by the Robbs was the first winery to be established in or in proximity to the town of Redbank and to this very day I am not aware of any other wine producer operating in the vicinity of the town of Redbank. My company is aware of several vineyards having been established in proximity to the town of Redbank and which supply grapes for wine production to the Redbank Winery. The town of Redbank is located in the wine region of "Pyrenees" (which is a registered GI) and annexed hereto and marked with the letters RWHS3 are copies of extracts taken from a Victorian Wine Atlas showing the Pyrenees wine region and the wineries/vineyards in this region. The Redbank Winery is the only winery shown on the map in the vicinity of the town

3. Mr Smith goes on to explain that his company bought the trade mark from Mr & Mrs Robb under an option contract – that is, the payment of a substantial deposit, the payment of royalties over a number of years, then (on the exercise of the option) the payment of a balance.  In a sense, this is an authorised user of the trade mark which culminates in a purchase.

4. Mr Smith gives sales figures from 1995-1996 to 2004-3005 and Mr Collings provides supplementary figures until the present time.  And, while confidentiality is not claimed, I observe that these sales over the period have risen from a couple of million dollars a year to several million annually in a linear progression and it seems reasonable to assume that amounts similarly regressed over the prior fifteen years of the trade mark’s use.  The trade mark has also been used on goods in export trade.

5. Comparably rising figures are given by Mr Smith for the expenditure by the applicant on advertising or promoting goods sold under the trade mark.  Mr Smith explains:

   The above promotional expenses relate mainly to Point of Sale materials and promotional merchandise such as caps, rugby tops, rubber boots and raincoats. Wine tasting events are held from time to time. Only a small amount of advertising is done in the print media. Annexed hereto and marked with the letters RWHS7 are copies of a selection of product literature and advertising/promotional materials which we have used to promote the sale of our "Redbank" wines.

6. The applicant has also established an Internet site at >

   Additionally, avers Mr Smith, the applicant has registered the trade mark in overseas countries, these being New Zealand and Canada.  It has registered the word Redbank and device trade mark in the USA, the United Kingdom and Canada.  The applicant also holds the following registrations in Australia:

   Reg No:               492352

   Filing Date:  2 August 1988

   Goods:  Class: 33 Bottled wine made in Australia

   Trade Mark:  

   Endorsements:                Registration of this trade mark shall give no right to the exclusive use of the geographic name REDBANK, the words SOUTH EASTERN AUSTRALIA CABERNET, and the numerals 1985

   In use the description 1985 CABERNET appearing in the mark is varied in accordance with the application of the mark to other goods comprised in the specification

   The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995

   App No:808703

   Filing Date:  28 September 1999

   Goods:  Class: 33 Wines and other alcoholic beverages in this class

   Trade Mark:  

   Endorsement:                  It is a condition of registration that the trade mark will only be used in respect of wines produced predominantly from grapes grown in the REDBANK area

7. Mr Collings, in his declaration, attests to his researches into the significance of the word REDBANK as a geographical word amongst vineyards in the district. 

8. Mr Collings says:

   Attached to this Declaration and marked as Exhibit BEMC1 is a copy of the map from the website at that was attached to the 2nd Examination Report issued against the Redbank Application. In this Report, the Examiner stated that his "own research indicates there are currently seven wineries already established within a 10km radius of the town of Redbank (see attached map)."

   [1] This map, or one similar to it, is attached as Annex 1 to this decision

   Attached to this Declaration and marked as Exhibit BEMC2 is a print-out from the website at listing the 20 wineries featured on the Examiner's map.  The eight wineries that appear to be closest to the town of Redbank are:

   ·     Dalwhinnie Wines (no. 4)[2],

   [2] The numbers refer to locations on the map and the text below it.

   ·     Jardine Wines (no. 7),

   ·     Peerick Vineyard (no. 10),

   ·     Pyren Vineyard (no. 11),

   ·     Redbank Winery (no. 14),

   ·     Summerfield Wines (no.17),

   ·     Taltarni Vineyard (no.18) and

   ·     Warrenmang Vineyard (no.19).

   I have been provided with print-outs from the websites of each of these wineries, other than Redbank Winery, by my trade mark attorneys, Madderns. These print-outs, dated 18 January 2007 and 24 January 2007 and marked with page numbers, are attached to this Declaration as exhibits as described below.

   Attached to this Declaration and marked as Exhibit BEMC3 are print-outs from Dalwhinnie Wines' website at

   a.           Page 1 indicates that "Dalwhinnie is located near the tiny village of Moonambel in the heart of the Pyrenees region of Western Victoria, Australia..." and that it "is the highest and most remote of the Pyrenees district vineyards".

   b.           Pages 5-8 feature the Dalwhinnie Moonambel Chardonnay 2004 and the Dalwhinnie Moonambel Shiraz 2004. The labels for these wines state: "Grapes grown at Dalwhinnie Vineyard, Forest Hut Rd, Moonambel, Vic".

   c.            Page 9 indicates that "Dalwhinnie is located near the small village of Moonambel, 20kms north-west of Avoca and 200kms from Melbourne, a comfortable 2.5 hour drive".

   d.           Page 10 lists Dalwhinnie Vineyard's address as 448 Taltarni Road, Moonambel, Victoria, 3478, Australia.

   e.           Page 11 features a detailed road map of the region. The town of Redbank is included on this map.

   Attached to this Declaration and marked as Exhibit BEMC4 are print-outs from Jardine Wines' website at (linked to 1 indicates that Jardine Vineyard is "situated on the north facing slopes of the Moonambel valley in the renowned Pyrenees Ranges" and that the wine has "...the elegance and finesse that characterises classic Pyrenees shiraz". Jardine Wines' address is listed as 1 Mugsies Road, Moonambel, Victoria, 3478,Australia.

   b.           Pages 2-4 feature order documentation that lists the same address.

   c.            Page 5 features two maps. Map 01 states that "Moonambel is located in the Pyrenees Shire in Western Victoria, 20km from Avoca". Redbank does not appear on this map. Map 02 provides directions on how to get to Montgrange. One of the arrows indicates the direction to Redbank and St Arnaud.

   Attached to this Declaration and marked as Exhibit BEMC5 are print-outs from Peerick Vineyard's website at

   a.           Page 3 states that "[o]f all the Australian wine regions renowned for great Shirazes, the Pyrenees in central Victoria would be in anyone's top bracket".

   b.           Page 4 provides the opening times for tastings and sales and states: "You will find us at the end of Wild Dog Track. Just follow the signs from the turnoff about 1.5 km west of the Moonambel township".

   c.            Page 5 features an order form which lists Peerick Vineyard's mailing address as PO Box 3053, Auburn, Victoria, 3123.

   d.           Page 6 lists the same address.

   Attached to this Declaration and marked as Exhibit BEMC6 are print-outs from Pyren Vineyard's website at 1 indicates that the vineyard is "[s]ituated on the northern slopes of the dramatic Warrenmang Valley in Australia's Pyrenees wine region" and refers to the "Pyrenees region's unique, cool climate style of shiraz".

   b.           Page 3 features labels which use 'Pyrenees' and 'Australia' as geographical indications.

   c.            Pages 6 and 7 feature an order form that lists Pyren Vineyard's address as Warrenmang-Glenlofty Road, Warrenmang.

   d.           Page 8 lists the same address and a postal address of C/O 22 Errand Street Nth, Ballarat Victoria 3350.

   Attached to this Declaration and marked as Exhibit BEMC7 are print-outs

   from Summerfield Wines' website at 1 describes Summerfield Wines as being "Nestled in the Tranquil Pyrenees Ranges" and lists the area as the "Pyrenees Region, Victoria, Australia".

   b.           Page 5 lists Summerfield Wines' address as 5967 Main Road, Moonambel, Victoria, Australia 3478 and features a map of the Pyrenees Region. Redbank is included on the map, although it is partly obscured by an arrow illustrating the location of Summerfield Wines near Moonambel.

   Attached to this Declaration and marked as Exhibit BEMC8 are print-outs from Taltarni Vineyards' website at 3 states that Taltarni is "...one of the founding wineries of Victoria's Pyrenees" and refers to the estate being located "in Victoria's Pyrenees".

   b.           Page 4 again states that Taltarni is "...one of the founding wineries of Victoria's Pyrenees" and indicates that "Taltarni Vineyards is located 225km northwest of Melbourne within the Pyrenees region of Victoria". The town of Redbank does not appear on the map featured.

   c. Page 5 lists Taltarni Vineyard's address as 339 Taltarni Road, Moonambel Victoria 3478, Australia

   Attached to this Declaration and marked as Exhibit BEMC9 are print-outs from Warrenmang Vineyard's website at 4 indicates that Warrenmang Vineyard Resort, "is located in the beautiful rural area in Victoria, (Map & Directions) just outside the tiny historic township of Moonambel..." and overlooks the "... distant purple mountains known as The Pyrenees".

   b.           Page 6 states that the winery is "Nestled in the heart of Pyrenees Wine country, 55 minutes west of Ballarat and less then two hours from Melbourne Airport..." The map provided does not include Redbank and the directions do not mention Redbank.

9. I note also that the prior owner of the trade mark is the only winery mentioned in the text at Annex 1 which has an address which includes the word ‘Redbank’.[3]

   [3] I also note that the Pyrenees Shire Council website lists only Mr & Mrs Robb’s winery with an address at Redbank.

10. Of the balance of the declarations in evidence, the declaration by William M Anderson is of particular significance.  Mr Anderson is a Director and part owner of Blue Pyrenees Estate Wines of Vinoca Road, Avoca which is number 3 in the list (and on the map) at Annex 1.  Mr Anderson is also a Director and part owner of Frenchman’s Road Liquor in Randwick, Sydney, and Director and co-owner of twelve pubs and bottle shops in Queensland.  Mr Anderson states:

    I am […] aware that the trade mark REDBANK was used by the Robbs during the 1980's and 1990's on wines produced from grapes which were sourced outside of the area of the township of Redbank in Victoria.

    I am aware that the trade mark REDBANK is used by Redbank Long Paddock Pty Ltd on wines produced from grapes sourced from different grape growing regions mainly in Victoria and to a lesser extent South Australia. I believe that it is generally well known in the Australian wine industry that the wines sold under the trade mark REDBANK by Redbank Long Paddock Pty Ltd originate from wine growing regions other than the GI region of "Pyrenees" in which the township of Redbank is located.

    Apart from the use of the name REDBANK as a trade mark by Redbank Long Paddock Pty Ltd, I know of no other wine producer using this name as a trade mark in respect of wines in Australia.

    If I were to see the trade mark REDBANK used on wines by any other wine producer or trader other than Redbank Long Paddock Pty Ltd, I would be deceived and confused. I believe the name REDBANK has acquired a secondary meaning as a trade mark identifying wines produced and sold by Redbank Long Paddock Pty Ltd and no other.

11. The ‘trade’ declarants attest in a form which is in common with that above.  For the sake of convenience, I will observe now that these declarations are:

    ·     From people with considerable experience in the wine trade or fields closely associated with it such as wine making, liquor distribution, liquor sales, fine wine sales, bottles shops, wine journalism, and wine tasting.

    ·     The declarations are sourced from most Australian States, the State which is not represented is Queensland; however, Mr Anderson has both strong ties with the liquor and wine trade in both that State and the Pyrenees wine district.

12. While the weight that should be accorded to such evidence might be affected by the fact that most of the ‘trade’ declarations are in common form, it is inherently improbable that several people with wide experience in the trade would have executed declarations whose content is both so detailed and dissonant with that experience.

1. Thus, I am inclined to view these declarations, in the context of these ex parte proceedings, as being of weight.

   Section 41

2. Section 41 of the Act provides a scheme for the assessment[4] of whether a trade mark is capable of distinguishing the goods or services of one person from those of others.  The initial step in terms of subsection 41(3) is a consideration of the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   [4] A detailed description of the way in which section 41 operates is given by Branson J in Blount Inc v Registrar of Trade Marks [1998] 440 FCA

3. In Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, Kitto J. at p. 514 encapsulated the test as follows:

   “[The] ultimate question must not be misunderstood.  It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it.  The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others…the question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.”

4. Branson J quoted a portion of the above passage in Blount Inc v Registrar of Trade Marks [1998] 440 FCA and subsequently went on to observe:

   In the Clark Equipment Co. Case at 514, Kitto J explained that the basic reason for the frequent refusal to register as a trade mark a word of prima facie geographic significance was the requirement that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons trading in goods of the relevant kind and actuated by proper motives might want to use the word in a manner which would impinge a registered trade mark granted in respect of it. His Honour went on at 515 to observe:

   "The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person's goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, i.e. in its own nature, adapted to distinguish the applicant's goods;..."

   See also the discussion of the notion of "inherently adapted to distinguish" in Oxford University Press v Registrar of Trade Marks (1990) 17 IPR 509.

   Reasoning

5. The word ‘Redbank’ is the name of a small population centre in the Pyrenees wine district of Victoria, northwest of Ballarat.  Redbank has a long history associated with gold mining in the area – but this was probably the glory days of Redbank.  I note that Redbank is now a very small population centre: it seemingly does not have a post office or sub-post office[5] – the nearest post offices are in Navarre, Landsborough, Avoca, Bealiba, or Elmhurst.  Redbank ceased to have a police station in 1902,[6] presumably with diminishment of the population after the gold working ran down.  There is, however, a hotel, the Shamrock & Thistle, which offers accommodation.[7]  Redbank has a population of about 150 people[8] although this, apparently, is in decline[9] to the extent that the local football club has been disbanded.

   [5] members.ozemail.com.au/~hdharris/Police.htm

   [7] >

   Redbank is thus a large hamlet, or a small village, and the expressions ‘town’ or ‘township’ used in the examiner’s reports (and the submissions of Madderns and counsel) are probably exaggerations.

6. The name ‘Redbank’ is also the name of the parish within which the village of Redbank is situated.  However, Parish names, as such, within Australia appear (apart from their governmental and legal use in identifying properties) to be slightly anachronistic.  There is no practice of which I am aware of vineyards taking their names from the Parish in which they are situated.  The difficulty in measuring the significance of the name, ‘Parish of Redbank’, is also complicated by the fact that it is also the name of a parish in New South Wales as it appears as such in the New South Wales Government Gazette,[10] in connection with land transfers.  Similar references point to a probable Parish of Redbank in Queensland.

   [10] >

   There is no conclusive information before me as to whether the area around the village of Redbank takes its name from the village and the name REDBANK thus applies to a district or locality within which wines are grown.  The information from the Robbs, albeit second-hand, is that they selected the name because it was that of the nearest village.  In a sense, then, the selection of the word to use in relation to their wines could be viewed as being arbitrary.  The information supplied by Mr Collings in his declaration would tend to support this view – other vineyards in the same area as the Redbank Winery do not have Redbank as a part of their address and seemingly look to Moonambel as the source of their address.  Presumably, if these wineries felt the need to identify their location, they would use the word Moonambel.  Conversely, the applicant does have the word ‘Redbank’ as a part of its address and it is, from the maps in evidence, not within the village of Redbank.  This latter point is probably the most telling as the Robbs’ winery is (on the maps in evidence) the closest to the village of Redbank.  Other present or future wineries which are as close, or closer, might (the effects of the applicant’s use of the trade mark put to one side) innocently have a legitimate need to use the name Redbank to honestly describe the origin of their goods.

7. Thus, in my consideration, the issue before me falls squarely within the provisions of subsections 41(4) and (5) of the Act:

   (4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

   (a) the Registrar is to consider whether, because of the combined

   effect of the following:

   (i) the extent to which the trade mark is inherently adapted

   to distinguish the designated goods or services;

   (ii) the use, or intended use, of the trade mark by the

   applicant;

   (iii) any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

   (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

   (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

   Note 1: For goods of a person and services of a person see section 6.

   Note 2: Use of a trade mark by a predecessor in title of an applicant and an

   authorised use of a trade mark by another person are each taken to be

   use of the trade mark by the applicant (see subsections (1) and 7(3)

   and section 8).

8. I return to the terms of the test posited by Kitto Jin Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514, quoted in full above:

   "[T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it."

9. Capacity to distinguish, acquired through use, can be thought of in much the same way.  The more that a trader has used a word that may lack inherent capacity to distinguish as a trade mark, the greater becomes its factual capacity to distinguish, and the less is the prospect that other traders can honestly think of the word to use it on their similar goods for the sake of its ordinary signification – because, in fact, the word is developing a secondary signification as a trade mark.  If evidence of extensive use as a trade mark establishes that it is unlikely that other traders could make honest use of the word for the signification that it ordinarily possesses, the trade mark may satisfy the test outlined in subparagraph 41(5)(a)(ii).

10. The word ‘Redbank’ has, because of doubts over its true geographical significance, some slight degree of inherent capacity to distinguish as a trade mark but also doubts over its capacity to function as such.  The evidence shows that the extent to which the applicant or its predecessors in business have used the word as a trade mark is significant and the trade mark has acquired the capacity to distinguish the goods of the applicant.  Whatever the geographical significance of the word REDBANK, I believe that the evidence shows that it is widely known within the industry and amongst the public such that it has developed a secondary significance as denoting the wines of the applicant.

    Section 43

11. Section 43 of the Act provides:

    43  Trade mark likely to deceive or cause confusion

    An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

12. Section 43 is the obverse side of the section 41 coin. If a word is descriptive of the origin of the goods, it follows that the word is misdescriptive when used in relation to goods that do not originate in that place and thus its use would deceive or cause confusion.

13. However, where a trade mark has acquired capacity to distinguish goods or services, it has acquired a secondary meaning – as connoting the goods, rather than the geographical origin of the goods. Thus, as the applicant has shown that the trade mark is in fact distinctive in relation to the goods, it appears to me that, in doing so, it has also addressed concerns that arise under section 43.

14. This view finds support in the trade declarations in evidence.  The declarants state their awareness that the applicant sources grapes from areas other than within the Pyrenees district, and this is generally well known in the Australian wine industry.

15. I also suspect that if a person knows enough about the Australian wine industry to know that the village of Redbank occurs within a wine growing area, then that person would know also that the wine does not actually originate there.

    Decision

16. I will accept application 1031035 for possible registration.

    Iain Thompson

    Hearing Officer

    Trade Marks Hearings

    13 July 2007

    2007 ATMO 37

    Annex 1

    Pyrenees Map

1.  Amherst Winery      Avoca Rd, Talbot       03 5463 2105	6.  Horvat Estate      Burke St, Landsborough        03 5356 9296	11.  Pyren Vineyard       Warrenmang - Glenlofty Rd,         Warrenmang         03 5467 2352	17. Summerfield Wines     5967 Stawell - Avoca Rd,         Moonambel         03 5467 2264
2.  Berry Bridge Wines      633 Carapooee Rd,       Carapooee        03 5496 3220	7.  Jardine Wines      1 Mugsies Rd, Moonambel        03 5467 2376	12.  Pyrenees Ridge Wines      532 Caralulup Rd, Lamplough          03 5465 3710	18.  Taltarni Vineyard      339 Taltarni Rd, Moonambel          03 5459 7918
3. Blue Pyrenee   Estate     Vinoca Rd, Avoca       03 5465 3202	8. Kara Kara Vineyard     Sunraysia Hwy, St Arnaud       03 5496 3294	13.  Quoin Hill Vineyard      Quoin Hill Rd, off Sunraysia           Highway, Waubra           03 5343 5365	19.  Warrenmang Vineyard      188 Mountain Creek Rd,           Mounambel            03 5467 2233
4.  Dalwhinnie Wines      448 Taltarni Rd, Moonambel        03 5467 2388	9.  Mount Avoca Vineyard      Moates Lane, Avoca        03 5465 3282	14.  Redbank Winery      Sally's Lane, Redbank           03 5467 7255	20. Cullenya Winery      260 Homebush Road, Avoca          03  5465 3360
5.  Eurabbie Estate      251 Dawson Rd, Avoca        03 5465 3799	10. Peerick Vineyard     155 Wild Dog Track,         Moonambel         03 5467 2207	16. St. Ignatius Vineyard       5434 Sunraysia Hwy, Avoca         03 5465 3542