Rothbury Wines Pty Ltd v Murray Tyrrell, Tyrrell's Vineyards Pty Ltd and Trevor Drayton - [2008] ATMOGI 1

AUSTRALIAN WINE AND BRANDY CORPORATION ACT 1980
Objection to determination of geographical indication
DECISION OF A DEPUTY REGISTRAR OF TRADE MARKS WITH REASONS
Re:Objection by Rothbury Wines Pty Ltd to determination of geographical indication filed in the names of Murray Tyrrell, Tyrrell’s Vineyards Pty Ltd and Trevor Drayton.

Summary

Deputy
Registrar:

Michael Arblaster

Representation:
Applicant:       Stephen Burley of Counsel, instructed by Frances Drummond of Freehills, Patent & Trade Mark Attorneys.
Objector:       David Catterns QC and Stephen Stern, solicitor, instructed by Luke Merrick of Corrs.

Decision:

2008 ATMO GI 1

1.   The evidence shows quite limited use of the word ‘Rothbury’ as a place name to designate an ill-defined area in the Lower Hunter Valley.

2.   Most people and businesses within the area covered by the proposed geographical indication (GI) appear to identify their geographical location by use of the word ‘Pokolbin’.

3.   The administrative Parish of Rothbury, and its boundaries, are unknown to many of its residents and the term appears to be used only in relation to identifying real property in the transfer of land title.

4.   The word ‘Rothbury’ thus has very little force as a geographical word.

5.   The evidence also shows that the word ‘Rothbury’ has developed a secondary meaning as a trade mark denoting the wines of the Objector, distinct from whatever geographical origins it might have had.

6.   Because a GI can be used in a trade-mark-like manner to promote the term as denoting the source of origin of the wine, the use of ‘Rothbury’ as a GI would be confusing with the registered trade mark “The Rothbury Estate”.

7.   The word ‘Rothbury’ has acquired a secondary meaning to denote the Objector and it wines. The Objector therefore has trade marks rights in the word “Rothbury” (in relation to wine). The use of ‘Rothbury’ as a GI would be confusing with the term ‘Rothbury’ which is contained in the registered mark “The Rothbury Estate” and which consists of the Objector’s pending mark Rothbury.

8.   Because a GI is territorially based, and its use is open to all that live within it, but the Objector’s trade marks are not, the use of the word Rothbury as a GI would, because of the reputation of the trade marks, be confusing.

9.   The likelihood of confusion is not ameliorated by any force that the word ‘Rothbury’ has otherwise developed.

10.    The Objector has made out its grounds of objection.

11.    There are no circumstances satisfying me that it would be reasonable to exercise my discretion to recommend determination of the GI.

12.    I give notice that, subject only to the outcome of an appeal against this decision, the GI Committee of the AWBC (the Committee) may not determine the GI without the consent of the Objector.

Background
Introduction

The US Free Trade Agreement Implementation Act 2004 enacted amendments to the Australian Wine and Brandy Corporation Act 1980 (‘the Act’) to provide measures:
“ … to provide specific procedures for the owner of a trademark to object to the determination of a geographical indication (GI) on the basis of pre-existing trademark rights …..”[1]
[1] US Free Trade Agreement Implementation Bill 2004, Explanatory Memoranda.
The procedures are contained within Division 4 of the Act. Section 40RA provides that, following an application for determination of a GI, the Australian Wine and Brandy Corporation (‘the Corporation’) must give notice inviting persons to object to the determination of the GI on the basis of prior trade mark rights. The objection is to be made to the Registrar of Trade Marks on grounds set out in Section 40RB.[2]
[2] S40 RB (the grounds of objection) is set out in full in Attachment A.
The amendments to the Act also reflect Australia’s international obligations under Section 2, (relating to trade marks) and Section 3 (relating to GIs) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (‘the TRIPS Agreement’). Section 40A indicates that the object of Part VIB of the Act, dealing with the protection of certain names and expressions, is to enable Australia to fulfill its obligations under prescribed wine trading Agreements. The only such agreement is that in force between Australia and the European Economic Community (the EC Agreement), as stipulated in Section 4 of the Act.
This matter
Mr Murray Tyrrell, Tyrrell’s Vineyards Pty Ltd and Mr Trevor Drayton of the Hunter Valley (‘the Applicant’) applied (by documents dated 15 July 2002, 25 August 2002, and 21 March 2002 respectively) to the Geographical Indications Committee (‘the Committee’) for determination of a GI named ROTHBURY. The proposed GI is based on the Parish of Rothbury in the Hunter Valley with some minor additions, apparently, from the Parish of Ovingham.
In response to a notice published on 23 February 2005 in The (Cessnock) Advertiser by the Presiding Member of the Committee, Rothbury Wines Pty Ltd (‘the Objector’) made written objections on 18 March 2005 to the determination of the GI.[3]
[3] The notice of objection, including the grounds claimed, is set out in full in Attachment B.
The grounds notified by the Objector are that at the time of application for the determination of the GI, the Objector was the registered owner of five registered trade marks, three “pending” trade marks and two common law marks, each of which would conflict (be a source of confusion) with the proposed GI if it were determined.[4] The Objector has also nominated a number of other ‘grounds’ as the basis for its objection. They evoke the criteria for determination of a GI by the committee, and are not properly a matter for consideration by the Registrar. Nevertheless, the evidence that relates to these latter ‘grounds’ may be relevant to a consideration of how the word ‘Rothbury’ functions, and as such are pertinent to my assessment of any likelihood of confusion and thus my recommendation to the Committee.
[4] The marks, which form the basis of these claims, are set out in paragraphs 26 and 27 below.
After considering the objections enlisted above, the provisions of the Act, and the evidence filed by the parties, it is open for me to find:
a)   whether the Objector has made out its grounds; and if so,
b)   whether circumstances exist in which it is reasonable nonetheless to recommend that the GI be determined; and to
c)   notify the Committee of my finding.
The parties have, in accordance with Part 6, Division 1 of the Australian Wine and Brandy Corporation Regulations 1981 (‘the regulations’), filed evidence in support of their respective positions and evidence in answer. As Deputy Registrar of Trade Marks[5], assisted by Hearing Officer Iain Thompson, I heard the arguments of the parties at a hearing in Sydney on Wednesday, 20 September 2006. David Catterns QC and Stephen Stern, solicitor, instructed by Corrs, represented the Objector. Stephen Burley of Counsel, instructed by Freehills, Patent & Trade Mark Attorneys, represented the Applicants Tyrrell Vineyards Pty Ltd and Mr Murray Tyrrell. Mr Trevor Drayton was not represented at the hearing, neither did he appear or file written submissions.
[5] Section 205 of the Trade Marks Act 1995 provides:
Evidence
The parties served and filed the evidence in support simultaneously – the process amounts to an exchange of copies of the evidence and filing of the originals at the Trade Marks Office. The evidence in chief comprises statutory declarations by:
Applicant:
(a)     Mr Murray Tyrrell dated 13 October 2005;
(b)     Mr Christopher Barnes dated 12 October 2005;
(c)     Mr Gregory Drayton (undated);
(d)     Mr Maxwell Drayton of 11 October 2005;
(e)     Mr John Tulloch dated 13 October 2005; and,
(f)     Mr Ian Tinkler dated 13 October 2005.
Objector:
(a)     Mr Mike Degaris of 10 October 2005;
(b)     Mr Stephen Marcus Stern of 3 October 2005;
(c)     Mr Rod Masters of 11 October 2005; and,
(d)     Dr Richard Smart of 12 October 2005.
The evidence in answer was also served and filed simultaneously and comprises statutory declarations by:
Applicant:
(a)     Ms Frances Drummond; and,
(b)     Ms Catherine Jouguelet, both dated 6 March 2006
Objector:
(a)     Professor Robert Lusby of 28 February 2006
(b)     Mr Kenneth Sloan of 28 February 2006,
(c)     Mr Neil McGuigan of 1 March 2006);
(d)     Mr Glen R Thomson of 1 March 2006;
(e)     Mr George Tsiros of 1 March 2006;
(f)     Mr Paul A Stuart of 1 March 2006;
(g)     Mr John Parkinson of 1 March 2006;
(h)     Mr Stephen Marcus Stern of 3 March 2006;
(i)     Mr David Lowe of 3 March 2006;
(j)     Mr Ross MacDonald of 7 March 2006.
(k)     Mr Christopher Hancock dated 17 March 2006
The Applicant, by letter dated 12 September 2006, sought leave to file additional evidence in the form of material publicly available on the register of trade marks. The declaration of Catherine Jouguelet of 15 September 2006, was served electronically on that day and admitted without objection.
The Applicant’s Evidence in Chief
Mr Murray Tyrrell is the Managing Director of Tyrrell's Vineyards Pty Ltd (‘TVPL’). Mr Tyrrell’s family settled in the Hunter Valley in 1858 and has been growing grapes and making wine there since that time. Mr Tyrrell gives his address as Broke Road, Pokolbin. Mr Tyrrell avers, “Viticulture and wine making played a major role in the early development of Rothbury in the 19th century. During the 1960's new wineries started up in the area. They were rapidly joined by other bigger wineries. The name Rothbury has been used as a GI since that time.”[6]
[6] In fact, I was presented with no evidence to support this statement or to show that the term “Rothbury” had ever been used as a GI (see paragraph 108 – 120.).
Appended to Mr Tyrrell’s declaration are both his and TVPL’s applications to the committee for determination of the GI ROTHBURY. I note that both of these are unsworn documents but the content is within the ambit of Mr Tyrrell’s statement in the foregoing paragraph.
The TVPL application states that Rothbury is recognised as a subregion by the wine industry and is accepted as such in our international markets. It indicates that Rothbury is on the Australian Wine and Brandy Corporation’s (AWBC's) list of protected names[7] and has been seen locally as a distinct region. The application attests that the parish boundaries of Pokolbin, Belford and Rothbury “have always been distinct and continue to be recognised by local residents as important”. It argues further that the parish boundaries “reflect historical usage of the proposed names as well as activities associated with viticulture and winemaking. The parish boundaries also align with the natural landforms and historical features in the area”.
[7] Although Rothbury was originally on a draft list provided by the Australian Government to the European Commission, and as such on Annex II of the Agreement, the term has never been entered on the AWBC’s Register of Protected Names. Its entry on future such lists and on the Register of protected names depends on the outcome of the present application.
The TVPL application argues that the geology, soil, landscape and climate are homogenous within the region and distinct from those of the surrounding regions:
The geology of Rothbury is generally uniform throughout the proposed subregion. Rothbury is dominated by rocks from the Dalwood Group of the early Permian period, and rocks from the Maitland Group of the mid-to-late Permian. The geological landscape of Rothbury also comprises minor extracts of the later Singleton Coal Measure. The proposed subregion of Rothbury is geologically divided by three fault lines. The Dalwood Group lies to the west of these fault lines, while the Maitland Group lies to the east of these fault lines. These fault lines are unique to Rothbury. They create a distinct distribution of the geological units, with the Dalwood Group to the west and Maitland Group to the east.
The soil landscape of Rothbury is another grape growing attribute which is homogenous throughout. The soil landscape is comprised of intermingling between the Rothbury soil and the Branxton soil which is uniform throughout the proposed subregion. It is this interaction between the Red Podzolic soils (Rothbury soil) and the Yellow Podzolic soils (Branxton soils) which makes the proposed subregion of Rothbury unique. This composition of soils does not appear to the same degree in any of the surrounding subregions.
With respect to climate, the proposed subregion of Rothbury is substantially homogeneous. Climatic factors such as temperature and rainfall have a substantial effect on the proposed subregion of Rothbury. In summary, Rothbury appears to have higher rainfall and lower temperatures than Belford, and lower rainfall and higher temperatures than Pokolbin. Rothbury is generally lower in elevation than Pokolbin, yet higher in elevation than Belford. The terrain of rolling hills in Rothbury differs to the undulating hills of Pokolbin and the alluvial flats of Belford. For these reasons, we submit that the proposed subregion of Rothbury is discrete from Pokolbin and Belford to a degree that is substantial.
I note that the distinction between the ‘rolling hills’ in Rothbury and ‘undulating hills’ of Pokolbin is a fine one and is lost on the writer of the geological report on which Mr Tyrrell relies in his application at Annex B to his declaration:
ROTHBURY SOIL LANDSCAPE
This soil landscape covers undulating and rolling low hills south and south-east of Singleton. Red Podzolic Soils (Dr3.21, Dr5.21) occur on upper slopes with Yellow Podzolic Soils (Dy2.41) on midslopes. Yellow Solodic Soils (Dy3.42) and brown Soloths (Db3.40) occur on lower slopes. There are Prairie Soils (Gn4.22) in the drainage lines.
The TVPL application also argues that, historically, the natural landforms have resulted in different land usage in those areas:
Land use and employment within the Parish of Pokolbin was originally directly related to agriculture in the form of vineyards, small cropping, orchards, diary farms, cattle grazing and timber cutting. In contrast, there has been virtually no agricultural development in the Parish of Rothbury. This is due to the poorer soil quality and lower rainfall levels.
Apart from wine grape growing and wine production, the other major industry in the Hunter region is the coal industry. Over the years, there has been a large degree of coal mining carried out in the Parish of Rothbury. In contrast, there has been no coal mining in the heartland of Pokolbin.
The TVPL application outlines the history of the Rothbury area from the earliest large land grants and the creation of the Parish of Rothbury to the more recent soldier settlement blocks. It highlights the development of roads and of community facilities.
Settlement within the Parish of Rothbury was significantly different to that of Pokolbin, Prior to the 1860s, large land grants were made along Black Creek and throughout the district. A number of smaller grants appear to have been made to a person by the name of Mitchell.
The large area of land shown as 10,000 acres on the old parish map included in Annexure 3 was an additional grant made to Richard Jones in 1839. It remained scrub land until the 1960s when it was later subdivided in the land rush era. This area of land is now known as Hermitage Road. In those days it was known as Belford Lane, as no road then existed. This road has been upgraded by the Singleton Council as a result of the subdivision. Prior to this, it was merely a track.
The area of land shown as Rothbury Estate on the old parish map included in Annexure 3 operated as a sheep station before it was resumed by government for subdivision for World War I soldier settlement blocks. A more recent parish map indicates that the land was later sold to the Travena family and Matthews family. An area of land to the west of the Rothbury Estate was granted to the Gear family.
The Tyrrell family selected an area of land in Rothbury in 1858. A number of other selections were made in the Parish of Rothbury by Hungerford, Kime, Love, Wills, Peacock, Hall, and Drayton. These consisted of smaller farms using winemaking, grape growing and general cropping as their source of income.
The large Phillips selection was very similar to the Tyrrells' selection. The Phillips family operated up until the 1940s or World War II when grape growing and winemaking ceased and general grazing occurred. The property was eventually sold during the wine boom in the 1960s. Their property actually joined the Tyrrells' property and was on land selected by Mitchell.
Mr Deasy selected an area of land in Rothbury in the early 1900s. The land was used to operate a sheep station continuously up until the 1950s when the wool market collapsed.
The land in Rothbury generally has poorer soil quality than Pokolbin and is noted on early maps as pasture land.
The early portions of land granted in Rothbury were generally larger than in Pokolbin. Subdivision of the Coulson and Bryce selection along Black Creek occurred in the late 1800s. However, the McDonald selection remained as one holding. The holding still has not been subdivided.
The large additional land grant on the north western boundary of Rothbury was subdivided during the early 1900s into a large portion (somewhere between 500 and 1,000 acres) but remained undeveloped until the land wine boom in the 1960s and early 1970s.
Hermitage Road was established with this subdivision and it was only then that access from Broke Road was upgraded from a track to a road. Hermitage Road is now divided into mainly 25 and 50 acre lots all with access to Hermitage Road as shown on recent parish maps (see Annexure 43). This type of subdivision also occurred on land along Deasy Road, Palmers Lane and Gillards Road where poorer soil existed. Prior to the subdivision, this land was not used for agricultural or viticultural purposes.
Some care must be taken in reading the application for determination. While the terms ‘Rothbury’ and ‘the Parish of Rothbury’ are both used in the applications, the distinctions between them are not apparent. Furthermore, it is unclear to what extent the businesses, community facilities, or vineyards referred to have ever identified themselves as being within either Rothbury or the Parish of Rothbury For example, the application states:
The first new boutique wineries started in Rothbury in the early 1960's. These included Lakes Folly and Jim Roberts Belbourie. These were followed by The Rothbury Estate in 1967, and Hungerford Hill also in the late 1960's. Both of these new wineries were geared around tourism. Rothbury Estate is renowned for its extensive mailing list and famous ribbon dinners. Hungerford Hill is well-known in the wine industry for its cellar door, motel, restaurant and wine village. Another popular attraction in Rothbury is a guesthouse called "Peppers". It opened in October 1984 and was the first high class accommodation built in the area.
Other major tourist developments in Rothbury include the Harrigans Irish Pub, the Vintage Country Club Resort (which is due to open later this year), the Hunter Valley Country Club Golf Course, the Hunter Valley Resort, and Casurina.
I note that Peppers guesthouse gives its address as Pokolbin, as does Lakes Folly, the Objector, Harrigans, and Hungerford Hill.
I also note that, of the 20 people who are listed as supporting the application for determination, one has an address at North Rothbury; the remainder have addresses at Polkolbin. Similarly, of the vintners or grape growers who are nominated as having vineyards within the proposed GI, one has an address at North Rothbury – the balance have addresses at Pokolbin. This is despite, as TVPL’s application records, Rothbury having its own postcode (North Rothbury also has its own postcode).
In his declaration, Mr Tyrrell states that the term Rothbury has been used in relation to wine by third parties. Annexed to his declaration and marked "Annexure I" are internet extracts in relation to Rothbury Ridge Wines Limited located at Rothbury. Also annexed and marked "Annexure J" is an extract from ASIC's database in relation to the company Rothbury Ridge Wines Limited.

Mr Greg Drayton avers that he has:
… lived and worked in the Hunter Valley Wine Industry all my life.
I am aware that Rothbury Wines Pty Ltd has objected to the determination of the geographical indication Rothbury.
The name Rothbury has always referred to by the local community as the region north of the Broke Road of the Lower Hunter wine growing area. The Rothbury Estate Winery was established in the 1970's and as the name "estate" implies was named after the region in which it was located. The name Rothbury is commonly use as place of address name for example the newly developed Vintage Resort which is heavily promoted as McDonaids Road, Rothbury which will contain over 600 residences.
Messrs John Younie Tulloch, Maxwell Keith Drayton, Christopher Barnes, and Geoffrey Tinkler provide what may be termed ‘supporting declarations’. These people are (or have been) involved in the wine industry and/or live in or near to Pokolbin in the Lower Hunter Valley – none of these declarants has an address in Rothbury. All in their various terms attest to the region in question being known and referred to as ‘Rothbury’; that ‘Rothbury’ has been used in connection with agriculture, mining and tourism; and that it is commonly used as an address. Mr Barnes also submits that Rothbury “has been accepted as a wine region”. While he indicates that he can produce historic records, books, maps and newspaper articles supporting this statement, none of these were provided as exhibits to his declaration.
The Objector’s Evidence in Chief
Mr Mike Degaris is General Manager and Chief Winemaker of Rothbury Wines Pty Ltd. He declares that Rothbury Estate was established in 1968 by a syndicate headed by the wine personality Len Evans.
Mr Degaris describes the establishment of the vineyard and winery over the successive years. He attests to the fact that The Rothbury Estate’s award-wining winery building was dubbed the “Pokolbin Opera House”. He also declares that many books relating to the Lower Hunter Wine Region refer to the winery and quotes an excerpt from John Beeston’s book A Concise History of Australian Wine (1994), in which Beeston attenuates Rothbury Estate to simply ‘Rothbury’.
Mr Degaris goes on to describe in some detail the establishment of the Rothbury Wine Society; a wine buying, tasting and educational club. He declares that the Society has some 50,000 members (of whom 15,000 are described as active) each of whom receives a regular newsletter. Members of the Society account for some 40% of The Rothbury Estate’s sales.
In relation to the use of the Objector’s trade marks, Mr Degaris refers to several ranges of wines “sold under and by reference to the trade marks ROTHBURY and ROTHBURY ESTATE by the Objector”. He cites a number of publications reproducing the ‘Rothbury marks’ and highlights that the most recent labels in evidence show the word ‘Rothbury’ prominently within the trade mark and used in larger font than the words “the estate”.
Mr Degaris provides a number of front and back of bottle labels to show use of the Objector’s trade mark. These show the use of the word ROTHBURY in greater or lesser degrees of prominence. Representative front and back bottle labels appear in reduced sizes, below:
The total number of bottles sold under the trade mark for the financial years leading up to 2004 is provided by Mr Degaris. Confidentiality is claimed for these figures so I will observe that the total number of bottles sold in the six years to 2004 is in the many millions and that the Objector was selling several million bottles a year at the date of the application. At the end of the first decade of production, as much as one third of the Objector’s production was in export trade. Mr Degaris avows that the use of the trade marks is not restricted to wines from the Parish of Rothbury, nor to wines from the Hunter Valley, but includes wines from a wide variety of regions. Mr Degaris cites Mudgee and Cowra as areas from which grapes are commonly sourced. He avows that because of this consumers associate the trade marks ‘ROTHBURY ESTATE’ and ‘ROTHBURY’ with the “Rothbury Estate and its wines, rather than a specific (if any) geographical area”. He states that:
The trade mark ROTHBURY signifies (both in Australia and internationally) Rothbury Estate, the Objector and its wines. In my opinion, it does not signify the old Parish of Rothbury.
Mr Degaris attests to the registered trade marks of the Objector. The first three in relation to wines in class 33, the fourth in relation to alcoholic beverages in class 33 and the fifth in relation to a range of wine, entertainment and tourism related services in class 41:

727340 THE ROTHBURY ESTATE

780828

896239

910882

988237 THE ROTHBURY PAN

Mr Degaris also brings into evidence the Objector’s pending applications to register trade marks:[8]
[8] These applications are filed claiming divisional application status from the Objector’s registrations – section 45 of The Trade Marks Act 1995 defines a divisional application. Divisionals of these divisional applications have also been filed by the Objector.

1007100

1123313
ROTHBURY
Class 35. Wholesale and retail services relating to the sale, distribution and marketing of alcoholic beverages; direct marketing and direct selling services in relation to the supply of alcoholic beverages including by mail order and by electronic means; promotion services including arranging exhibitions and tasting events in respect of wines.
This application claims divisional status based on the earlier application, itself a divisional.

1007101

1123316
THE ROTHBURY WINE SOCIETY
Class: 33 Wines including sparkling wines
This application claims divisional status based on the earlier application, itself a divisional.

1011558

1129098
ROTHBURY
A wide range of goods and services in class 18, 25, 29, 30, 31, 32, 33, 35, 39, 40, 43 and 44.
This application claims divisional status based on the earlier application itself a divisional.

Dr Richard Smart is a viticulturist and the Principal of Smart Viticulture Pty Ltd. He describes himself as an expert viticulturalist and provides an outline of his career culminating, over the last 15 years, as a specialist consultant including in relation to vineyard appraisal, site selection and design. Dr Smart concludes that there are no major differences between the proposed Rothbury and Pokolbin GIs to the extent that either can be considered discrete or homogenous. He declares that the proposed boundaries have no basis in climate, soil or topography and that the Parish boundary is an administrative device with no respect for such grape growing attributes.
Stephen Marcus Stern in his first declaration declares that he is a solicitor of Corrs Chambers Westgarth. His declaration outlines the conduct of what he describes as “a very extensive review of wine producers in, and of historical records relating to, the Lower Hunter Valley”. The declaration states that the review also examined “marketing materials and labels of wine producers both current and, to the extent possible, historical records located in and around the old Parish of Rothbury (the Reviewed Producers)”.
Mr Stern gives the results of his team’s research and review in tabular form with accompanying exhibits. He states that the results invite the following conclusion:
The clear picture that emerged among the reviewed producers is that a vast number of wine producers located in the old Parish of Rothbury describe the location of their vineyard or winery as POKOLBIN.
Mr Stern lists the forty-six vineyards or wineries within the Parish of Rothbury; these give their addresses by reference to Pokolbin – the one exception, de Iullis, gives its own address as Broke Road, Lovedale, but its address is given by the Hunter Valley Wine Guide as being at Lovedale Road in Rothbury.
The latter part of Mr Stern’s declaration addresses the technical merits of the application for determination to the Committee. This decision, however, is not concerned with the technical merits of that application, per se, although the materials help shed light on what the word ‘Rothbury’ denotes, or connotes, in relation to wines and wineries.
Rodney P. Masters is the Managing Director and Principal of GSS Environmental. He has held this position since 2003. GSSE is an environmental consultancy that specialises in soil and land capability assessment and all aspects of land repair and reclamation. GSSE is the environmental consultancy arm of the Global Soil Systems Group of Companies and specialises in resource assessment, soil and water conservation and mine rehabilitation.
Mr Masters provides a detailed critique and comparison of soil types within the areas covered by the proposed Pokolbin and Rothbury GIs. Much of this declaration is highly technical and of significance to my decision only to the extent that it bears on connotations associated with the word ‘Rothbury’. Mr Masters attests:
Whilst the soil properties (relevant to grape growing) are homogenous throughout the wider Hunter Valley catchment area they are, in my opinion, certainly not discrete with respect to the proposed sub-regions of "Rothbury" and "Pokolbin".
Applicant’s Evidence in Answer
Frances Drummond is a partner in Freehills Patents & Trade Mark Attorneys, the attorneys for Tyrrell's Vineyards Pty Ltd and Mr Murray Tyrrell, two of the Applicants for the determination of the Rothbury GI. Ms Drummond makes the proposition that, “Rothbury is a geographical location with a reputation in relation to wine and wine growing,” and attaches several exhibits to her declaration in support of the hypothesis.
The first, "Annexure FMD-1" is a copy of extracts from a book "A History of Greater Cessnock, Mines, Wines and People" by W.S.Parkes, Jim Comerford and Dr Max Lake published by the Council of the City of Greater Cessnock in 1979. It records that:
The development of vineyards in the lower Hunter Valley began first on the Hunter River itself at Kirkton with the Busby and Kelman families, and then spread to the north side of the river on the foothills of the Great Dividing Range, in the valleys of the Paterson and Williams Rivers, east to Port Stephens. The vineyards there served as a fountainhead of expertise and indeed a source of vines, for the development of vineyards in the Cessnock area which followed the Robertson Act land grants forty years later. One suspects that the early success of these north bank vineyards occurred during an unusually favourable (for the vine) climatic decade or so, as all of these enterprises had terminated later in the century. Now, with a fifty-inch or more annual, mainly summer rainfall, the prospects of severe disease are too great to consider any planting there, and have been so, in living memory. Things must have been much more favourable a hundred years ago, emphasising the climatic cycles that so typify viticulture in the Hunter. Good wine can always be made, with difficulty, in wet years; but it is a series of great wines, from fine grapes, that make a district's fame and fortune. This depends on continuing reasonable to outstanding seasons, evident this century, on the south side of the Hunter River, between it, and the Mount View Range over Pokolbin and Rothbury westward to Fordwich, and embracing the slopes and plains from Sawyers' Gully northward. [Stress added]
"Annexure FMD-2" is a copy of extracts from a book "A Concise History of Australian Wine", by John Beeston, second edition 1995. I note that while both this annexure and FMD-1 make reference to Rothbury as an early location neither contains express reference to its promotion as a wine producing region:
John McDonald came to Pokolbin in 1870, building a house and winery and planting every vine on his 'Ben Ean' property with his own hands. Though his winery stands today as Lindeman's Hunter Valley headquarters and the brand 'Ben Ean' sells many bottles of Lindeman's, the region's only memory of McDonald, who sold his winery to Lindeman's in 1912, is the name of the road leading from Pokolbin to Rothbury. [Stress added]
"Annexure FMD-3" consists of extracts from a publication compiled by Ivan Howard titled "Pokolbin Community Halls, Their History and Development". This publication records an undated but apparently historical comment from the letters column of a newspaper correcting confusion about the boundaries of the parishes of Rothbury and Pokolbin:
There is a good deal of misconception with regard to the Parish of Pokolbin. It may often be noticed throughout the columns of your paper that persons who do not reside in this parish are represented as residing in it. I notice in one of your last issues the appointment of Mr Edward Tyrrell of Ashwonda, Pokolbin, to the Commission of the Peace. Mr. Tyrrell does not reside in the Parish of Pokolbin, but in the Parish of Rothbury. [Stress added]
Another extract, from the Maitland Daily Mercury of 7 March 1906, records a correspondent’s experiences hunting dingoes at ‘Rothbury Station’:
On my return from Keepit Station I went out to Rothbury Station, and asked permission to shoot kangaroos. The boss, Mr. T. B. Watson (a Sydney solicitor) said that he would not allow anyone to shoot on the station. It is his own men [he would allow] as I might shoot some of his sheep. I asked him if he was aware that there were about 14,000 kangaroos, 50,000 wallabies and hundreds of dingoes, on his station. He replied that he knew that he was nearly eaten out with roos and wallabies, but said that be could not allow strangers on his ground. [Stress and other parenthetical material added]
"Annexure FMD-4" is a copy of extracts from a book "Hunter Winemakers" by Max Lake, published by The Jacaranda Press, in 1970. The book records two references to Rothbury as a location. “Annexure FMD-5” provides copies of a real estate agent’s advertising of two properties for sale in ‘Rothbury’. "Annexure FMD-6" contains photographs of a sign advertising land for sale at the Vintage Resort, at McDonald’s Road, Rothbury. This, presumably, is the land development referred to by Mr Gregory Drayton in his declaration, in paragraph 23 above.
Catherine Jouguelet’s declaration in answer brings into evidence a letter from a Mr Ray Shipton. This letter is unsworn and will be weighted accordingly but gives very much the same sort of information as in the declarations by Messrs Tulloch, Barnes, Tinkler and the declarations of Gregory and Maxwell Drayton. Mr Shipton distinguishes between ‘Rothbury’ and Rothbury Estate in the following terms:
Rothbury is a small village[9] between Cessnock and Branxton. A part of the northern end of the Valley falls into the Parish of Rothbury.
The Rothbury Estate, to me, is a Company started in the early 1970's by Len Evans and Murray Tyrrell, among others.
[9] Here Mr Shipton apparently refers to the hamlet North Rothbury. There is no village of Rothbury.
Objector’s Evidence in Answer
Mr Stern’s second declaration relates to the Objector’s dealings with the company Rothbury Ridge Wines Limited referred to in Mr Tyrrell’s declaration. While Mr Tyrrell averred that the term Rothbury had been used in relation to wine by third parties, Mr Stern declares that that usage was the subject of an infringement action filed by the Objector in the Federal Court. Mr Stern’s exhibits to his declaration make it clear that, as a result of consent orders from the Court, the third party no longer uses a trade mark, company name, business names or domain name which includes the words ROTHBURY RIDGE. The declaration by Luke Merrick also addresses these dealings.
Kenneth Graeme Sloan is the owner of Mistletoe Wines, which is located near Pokolbin. After outlining his experience in the industry, Mr Sloan claims a detailed knowledge of the production and marketing aspects of wine. He states that the term “Rothbury” signifies The Rothbury Estate:
As a long term visitor and (more recently) a resident of the Lower Hunter Valley, to me, the name 'Rothbury' principally refers to Rothbury Estate.
To me, first and foremost the name Rothbury brings to my mind the name of the very well-known Rothbury Estate. Rothbury means to me, after all of my experience in the Lower Hunter Valley, that well-known vineyard and winery. I also know, of course, of the North Rothbury village but if the name Rothbury is used alone, I never associate it with the village.
He further attests that to the best of his recollection “I have never seen, or heard of, grapes or wines or any other products being sold or marketed as originating from Rothbury”. He indicates that when in the course of this dispute it was brought to his attention that some producers were using Rothbury as part of their address it came “as a complete surprise”. This because:
Prior to the issues in this dispute being brought to my attention, I had never heard the name Rothbury used to describe either a place name or a geographical point of reference in respect of wine.
Professor Robert Lusby in his declaration attests that he is the owner and manager of Tintilla Estate, a wine producer located in the Lower Hunter Valley. He claims extensive knowledge of the production and marketing of wine (especially from the Lower Hunter). He states that:
To me, the name 'Rothbury' means Rothbury Estate. In this regard, I have been a member since the early 1970s of The Rothbury Estate Society, a wine club operated by Rothbury Estate (which is now known as the Rothbury Wine Society). The name also brings to mind the very small township of North Rothbury, which is near Braxton. I am also now aware that Rothbury is the name of an old parish.
In all the time that I have been visiting and living in the Lower Hunter Valley, I had never heard anyone mention the parish of Rothbury until approximately 1998 when, in the context of this dispute, I was informed that there has historically been a local parish named Rothbury. Prior to this date, I had never heard anyone use the name Rothbury to describe either a place name or a geographical point of reference in respect of wine or in respect of any agricultural or other products. I had only ever heard the name Rothbury as a reference to (most commonly) Rothbury Estate and (less commonly) the township of North Rothbury.
I have never seen, or heard of, grapes or wine or other products being sold or marketed as originating from Rothbury. Further, I have never seen, or heard of, wine labelled under the name Rothbury (with the exception of Rothbury Estate's wines). The vast majority of wine that I have seen in the Lower Hunter Valley has been labelled "Hunter Valley", which is a well known and recognised region. I have occasionally seen wines labelled "Pokolbin", but I have observed this less frequently.
I have sometimes seen people use the name Rothbury as a part of their street address. Such usages are, in my experience, infrequent.
When I purchased Tintilla Estate in 1993, it was advertised for sale as being located in the Hunter Valley. The property was not promoted or marketed or represented to me by anyone as having any connection with the parish of (or any area named) Rothbury.
George Tsiros and Glen Thomson make declarations in similar vein. George Tsiros is the owner and manager of Peacock Hill Vineyard, Pokolbin in the Lower Hunter Valley. Glen Thomson gives his evidence against a background in tourism promoting the region and its wines inter alia for the Cessnock Tourism Board.
For both Messers Tsiros and Thomson the name ‘Rothbury’ is synonymous with ‘Rothbury Estate’ or its wines. Both attest that they have no knowledge of grapes or wines being sold or marketed as originating from the region or area of Rothbury. Both attest that the only wine they have seen labelled as “Rothbury” are the wines of Rothbury Estate wines (and in Mr Tsiros case the temporary usage by Rothbury Ridge vineyard). Both suggest that the area is known as either “Pokolbin” or more frequently “The Lower Hunter”.

Like other declarants for the Objector, Mr Thomson indicates, with the use of exhibits, that the use of the parish name is rarely used, being linked, in his experience, to the sale of property:
This came to my attention when I purchased the Grandvin vineyard as the property details listed the parish in which the vineyard is located as Rothbury. On the other hand, the Contract for Sale of Land, the correspondence from my lawyers and the advertisement for the land in question all refer to that land as being located in Pokolbin. Copies of those documents are attached hereto as Annexure C. Prior to that time, I had never heard of the parish of Rothbury, let alone any suggestion that the word Rothbury is, or was used as, the name of a wine region. In my significant experience in the tourism and wine industries in the Lower Hunter Valley, when people use the word Rothbury it is almost always a shorthand version of the name Rothbury Estate.
John Parkinson of Pearl Beach attests that he is the Head of Wine Brand Strategy and Trading for Cellarmaster Wines. His declaration covers much of the same ground as those before it and supports the position that ‘Rothbury’, in relation to wine, signifies The Rothbury Estate and its wines. He emphasises the role of The Rothbury Estate in the development of the region and its reputation.
The first and clearly the most prominent thing which is called to mind by the name Rothbury is Rothbury Estate. Having visited the Hunter Valley on countless occasions over the course of more than three decades, I have witnessed first hand the establishment and growth of Rothbury Estate and its fame as a wine producer. Rothbury Estate is one of the most famous producers of wine in the Hunter Valley and it has played a significant role in increasing the commercial profile of the Hunter Valley as a wine producing region.
Conversely, Mr Parkinson emphasises that he is not aware of ‘Rothbury’ as a geographic place or region being marketed as a source of wines:
I can't remember the name Rothbury being used to describe a wine region or a geographical point of reference in respect of wine. When I have seen or heard the name Rothbury in connection with wine, it has been in connection with Rothbury Estate.
In the entire time I have been involved in the wine industry, I have never seen, or heard of, grapes or wine being sold or marketed as originating from Rothbury.
I have also never seen or heard of any wine labelled Rothbury, with the exception of The Rothbury Estate wines.
Neil Anthony McGuigan of Nulkaba is the General Manager of Production and Wine Supply for McGuigan Simeon Wines Limited. After outlining his experience in the region and industry he states:
As a winemaker it is important to know the origin of the fruit used in the production of wine in order to ensure that the ways in which you market wine complies with the Label Integrity Program (LIP). The LIP is a recording system which provides an audit trail from grape purchase to finished product, to substantiate label claims in respect of vintage, variety and geographical indication.
I have never purchased, or heard of anyone purchasing, grapes from a grower that are stated to originate from "Rothbury". I have, however, regularly purchased grapes from growers that are stated to originate from the "Hunter Valley", the "Lower Hunter Valley", "Lovedale/Allandale", "Mount View" and, occasionally, "Pokolbin". In particular, I note that I have purchased grapes from numerous different growers located in the Lower Hunter Valley.
I have never seen or heard of any wines called or labelled Rothbury (with the exception of The Rothbury Estate wines, the matter referred to in paragraph 18 below[10] producer for one vintage in the 1980s). Similarly, I have never seen or heard of any grapes or indeed any other products being marketed or sold under the name Rothbury.
In my experience, there is no connection between the name Rothbury and the production or sale of wine other than in respect of Rothbury Estate and its wines.
[10] Paragraph 18 of the declaration refers to Rothbury Ridge Wines.
Paul Anthony Stuart, of Pokolbin, is the Sales and Marketing Manager at Bimbadgen Estate, a vineyard and winery located in Pokolbin, in the Lower Hunter Valley. Mr David Lowe of Mudgee states that his is one of the owners and the manager of the Lowe Family Wine Company, a wine producer located in Mudgee. He avers that he lived in the Lower Hunter Valley from 1979 to 1991 and has been making and marketing wine in the area since 1978. Both make declarations in similar terms that ‘Rothbury’ signifies The Rothbury Estate and its wines and that they are not aware of ‘Rothbury’ being used by others to promote the geographic origin of wine.
Mr Ross McDonald, who alone of the declarants in the matter gives his address as being at Rothbury, says that he is the owner of Macquariedale Estate, a vineyard located in the Pokolbin vine region in the Lower Hunter Valley. He goes on to aver that he has:
Even though the address of Macquariedale Estate is 170 Sweetwater Road, Rothbury, we have never used the name Rothbury on our wine as a wine region or to indicate the source of the wine. The wine produced by Macquariedale Estate is labelled, sold and marketed under the name Hunter Valley.
In the entire time I have been involved in the wine industry, I have never heard of grapes or wine being sold or marketed as originating from Rothbury.
In my view, insofar as the name Rothbury has a reputation in the Lower Hunter Valley or in respect of wine, it is because of The Rothbury Estate. In my view, any association or connection between wine and the name Rothbury comes solely from the reputation of the wines of The Rothbury Estate.
Mr Christopher Hancock of Manly outlines a stellar and varied career in the wine industry. Mr Hancock goes on to aver that:
When I hear the name 'Rothbury', it first and foremost brings to mind Rothbury Estate. The name Rothbury also brings to mind (albeit in a much more secondary manner) part of the name of the small village of North Rothbury, located near Branxton in the Lower Hunter Valley.
In the context of this dispute, it has also come to my attention that there is an old parish named Rothbury, which is near North Rothbury. I had never heard of this parish prior to this dispute. However, in the entire time that I have been involved in the wine industry, I have never heard anyone use the name Rothbury to describe a wine region or geographical point of reference in respect of wine.
To the best of my knowledge, I have never heard of grapes or wine being sold or marketed as originating from Rothbury.
I have never seen, or heard of, wine labelled under the name Rothbury other than the wines of Rothbury Estate. The vast majority of wines that I have seen from the Lower Hunter Valley have been labelled "Hunter Valley'.
Discussion
Statutory Background - Definitions
Relevant to this matter are the following provisions:
(a)Section 4 of the Act defines ‘geographical indication’
(b)Sections 5C and 5D of the Act define the meaning of “description and presentation” (with which wine is sold) and the meaning of (where wine) “originates” respectively.
In relation to trade marks, the Act makes the following provisions:
trade mark has the meaning given in the Trade Marks Act 1995.
Register of Trade Marks means the register kept under section 207 of the Trade Marks Act 1995.
registered owner, in relation to a trade mark, means the person in whose name the trade mark is registered under the Trade Marks Act 1995.
registered trade mark means a trade mark whose particulars are entered in the Register of Trade Marks under the Trade Marks Act 1995.
pending, in relation to an application for the registration of a trade mark under the Trade Marks Act 1995, has the meaning given in that Act.
The relevant provisions of the Trade Marks Act 1995 (‘the TMA’) are:
(a)Section 17, which specifies “What is a trade mark?”
(b)Section 7, which defines the use of a sign as a trade mark.
(c)Section 228 which provides for the use of a trade mark for export trade.
Statutory Background – the provisions of the Act
Section 40RB of the Act specifies the grounds of objection. Loosely, the provisions require me to consider the nature of the trade mark rights claimed by the owner (whether Registered, Pending or common law) and to decide whether the GI in question is “likely to cause confusion” with any of the terms in which rights subsist. The structure of the section deals in turn with registered rights, rights in pending applications and common law rights. The second and third subsections therefore mirror the first with only minor differences. I will replicate the provisions dealing with registered rights below, and will comment on the differences when these arise.
In respect of registered rights Section 40RB provides:
40RB Grounds of objection to the determination of a geographical indication
Registered owner of a registered trade mark
(1)   The registered owner of a registered trade mark may object to the determination of a proposed GI on one of the following grounds:
(a)   that the trade mark consists of a word or expression that is identical to the proposed GI;
(b)   that:
(i)        the trade mark consists of a word or expression; and
(ii)       the proposed GI is likely to cause confusion with that word or expression;
(c) that:
(i)        the trade mark contains a word or expression; and
(ii)       the proposed GI is likely to cause confusion with that word or expression; and
(iii)      the owner has trade mark rights in that word or expression.
(2)   The owner may object on the ground specified in paragraph (1)(c) even if there are conditions or limitations entered on the Register of Trade Marks suggesting that the owner does not have trade mark rights to that word or expression.
It will be helpful at this point to comment on some aspects of these provisions.
Standing
While standing was not an issue before me I note simply that for an Objector to have standing it is enough for them to be the Registered owner of a trademark, to have an application pending for registration, or to claim that they have rights in an unregistered mark.
Onus
The structure of these provisions invites a conclusion that the onus lies with the Objector to establish the ground relied on, on the balance of probabilities: Rejfek v McElroy (1965) 112 CLR 517 at 521. Moreover, submissions from the Applicant asserted this conclusion, and the Objector did not contest the issue.
The question of comparison of terms
Subsections 40RB (1) (3) & (4), set out the grounds on which a person may object to the determination of a GI. Relating to registered, pending and unregistered rights respectively, each has the same basic structure, being broken into three parts. In each case a “word or expression”, forming part, or all of, a trade mark is to be compared with the proposed GI, with a view to determining whether the proposed GI is likely to cause confusion with that word or expression.
In each subsection, I must first decide whether the trade mark “consists of” or “contains” a relevant “word or expression” (the relevant term) with which to compare the GI. The distinction here I think is clear. “Consists of” implies that the trade mark is made up entirely of the word or expression, whereas “contains” allows for the possibility that the mark includes the relevant word or expression along with a range of other material of greater or lesser significance.
If a registered trade mark consists of a word or expression and that word or expression is identical to the GI, then the ground under (1)(a) is established. No further comparison leading to a conclusion of the likelihood of confusion is required. The implication of this is clear. If the proposed GI is already registered as a trade mark, then the registered owner is presumed to have rights in it and there is a presumption of a risk of confusion. I note that this is consistent with Australia’s obligations under Section 2 of TRIPS.
Section 40RB refers to a word or expression which is identical to the GI. In making a comparison of trade marks, Sections 44 and 60 of the TMA refer to trade marks that are “substantially identical”. If two trade marks are “substantially identical”, then one can say that they share the same identity with only minor variations or additions. An interpretation of “identical” which incorporates the concept of “substantially identical” would lead to a presumption in the provisions that a GI would cause confusion with a registered mark with which it shared the same identity. Because the intent of this provision is to protect prior trade mark rights, it may have been appropriate to use this test. The statute however, refers to terms which are “identical”. The Applicant submitted that in this context, the comparison dictated by “identical” is narrower than that dictated by Sections 44 and 60 of the TMA and cited by analogy Verband Bayerischer Ausfuhrhrauereien Engetrgener Verein V Bavaria NV [2006] ATMO 53 (30 June 2006) at [10]. I agree with the Applicant’s submission. The plain meaning of Section 40RB requires not a shared identity, but that the two words or expressions be identical.
Where a trade mark that is the basis for an objection does not consist of a word or expression that is identical to the GI, then two further options are open to the Objector:
a) The GI so resembles the trade mark, as a whole, that the GI is likely to cause confusion with the trade mark;[11] or
b) That the GI is likely to cause confusion with a word or expression (a relevant term) that is contained within the trade mark and in which the owner can establish trade mark rights.
[11] Section 40RB (1) (b).
In respect of this last point, the Applicant submits that it is necessary for the GI to be compared with the trade mark in its entirety “without shearing a part of the mark from the whole”. In support of this, the Applicant cites Crazy Ron’s Communications Pty Ltd and others v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 (FFC). I agree with the submission only to the extent that we are considering those trade marks that “consist” of the word or expression that is being used for comparison with the GI. Section 40RC(1)(c)[12] on its face clearly anticipates the possibility that only part of the trade mark (a word or expression contained in the trade mark) would be used for comparison.
[12] See also 40RC (3)(c) and 40RC (4)(b).
Identifying trade mark rights in the relevant term.
The provisions of Section 40RB of the Act envisage that an Objector may claim rights relating to one or more registered, pending or unregistered trade marks. In each case, it is possible that the word or expression with which the GI is to be compared is either the trade mark itself or a subset of it. If the GI is to be compared with the trade mark itself then it is assumed that the registered owner has rights in that word or expression. This is because ownership of a registration for a trade mark which is identical to the GI term is sufficient to establish the ground of objection. This is consistent with the structure of the TMA, which in Section 20 indicates that registration conveys rights on the registered owner to use and exclude others from using the sign. It also envisages (Section 84) that rights in a trade mark need to be confirmed through use and that terms which are not used as trade marks are subject to cancellation.
It follows, that in considering any of the situations set out in subsection (1) of Section 40RB of the Act the starting point can be that the owner has rights in the trade mark as a whole. If the relevant term is so similar to the whole trade mark that its identity is the same then the owner will have rights in the relevant term. This will often be the case where the additional material or alterations are purely descriptive and do not alter the idea of the trade mark. If however, differences exist between the trade mark as a whole and the relevant term, then there will need to be evidence of use of the relevant term by the registered owner. The use will need to establish that there is an association between the relevant term and the owner of the trade mark as the origin of the relevant goods or services. If this association is established, the owner of the trade mark is then considered to have trade mark rights in the relevant term and the proposed GI would be likely to cause confusion.
In the case of a pending trade mark the situation is similar. If the relevant term for comparison is the trade mark itself, the owner must first establish that they have trade mark rights in the pending trade mark by satisfying the Registrar that it meets the requirements for registration. If however, the relevant term for comparison is a subset of the trade mark, the owner must first show that the trade mark as a whole (as applied for) satisfies the requirements for registration, and then that they have rights in the subset being used for comparison. In this case, the considerations set out in paragraph 76 above will apply.
Thirdly, if the Objector is relying on an unregistered trade mark, they must establish that trade mark rights have been acquired through use in the relevant term for comparison. This requires an assessment of the extent of use and what, if any, connotation there is associated with the trade mark. It is also necessary that those rights were acquired through use in good faith.
Section 40RB requires that a pending application has been made in good faith and that any rights acquired through use in an unregistered mark have been acquired in good faith. The TMA has a rebuttable presumption that an application is made in good faith. It can be tested. One of the grounds of Opposition to registration is that the Application was made in bad faith and “that there was no intention in good faith to use the mark” is a prescribed ground for both Removal by the Registrar and Cancellation provisions. That construct is not directly transferable here because the Act requires a decision maker to be satisfied that a pending application was made in good faith and that rights in a common law trade mark were acquired through good-faith-use. The construct of the TMA is however relevant in a consideration of this question. There is an implicit expectation in the TMA that traders will seek to promote their brands, that they will seek registration for trade marks and seek to enforce these rights. This is normal and fair use.
The question in the context of the Act will be whether the trade mark owner has behaved in a normal and fair way, one that could have been expected in all the circumstances, of a person acting in good faith. In particular, the question will revolve around what use has been made of the trade mark, what link this has with the owner’s business and business strategy, and to what extent that behaviour has been influenced by or is directed purely at the application for determination of the GI. Considerations here will include:
a)the nature of the business activity and strategy of the Objector. For example, if the business is a long standing one and the term has no direct link to the business name or owner of the mark one might wonder why the term as been chosen at this point in time. Alternatively, if the trade mark has some direct link with a long-standing business name or the Objector can provide evidence of a well developed business strategy then this would contribute to a finding of good faith.
b)the date of first use of the trade mark and its timing in relation to the application for determination of the GI. If the trade mark was first used, and rights acquired, a long time before the application for the GI then this would support a finding of good faith. Conversely, if first use of the trade mark and the application for registration were both made immediately before the application for determination of the GI[13] this would make good faith harder to establish.
c)whether actions before the Registrar, or actions in the marketplace to enforce rights, are those within the bounds of what is expected of an owner of a trade mark seeking to establish and prosecute their rights.
[13] Or even after.

A further issue in identifying the rights of an Objector revolves around whether those rights must have been acquired through the use of the relevant term itself, or whether they can have been acquired through use of the relevant term with minor additions or alterations.
However, the words within the statutory definition of a trade mark as being, “a sign used, or intended to be used, as a trade mark…,” brings into operation the other provisions of the TMA which concern the use of a trade mark. These provisions include Section 228 concerning use of the trade mark in export trade. Also relevant to these reasons is Section 7 of the TMA which provides that:
“If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.”
In other words, if the words ‘THE” and “ESTATE” do not substantially affect the identity of the word ROTHBURY within the trade mark THE ROTHBURY ESTATE, it is open to me to find that the Objector has used the trade mark ROTHBURY.[14]
[14] It is important to distinguish the consideration in paragraph 71 from that here. In paragraph 71, I deal with the interpretation of “identical” in a comparison of the relevant terms under 40RB(1)(a) and related clauses. Here, it has been decided that the terms are not identical under that provision. However in deciding whether the owner has trade mark rights in a term it is necessary to examine the term in the context of its use as a trade mark and its identity under the TMA.
Ultimately, the comparison in this kind of question goes to such cases as PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602 and Microcom Pty Ltd v Microcom Systems Inc (1998) 41 IPR 163 as well as Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft (1965) 120 CLR 285 (Bayer Pharma) and Blount v Registrar of Trade Marks (1998) 83 FCR 50 (Blount). I think that this reasoning is also open to the Registrar and her delegates in relation to the provisions of the Act. And it is a course which is, in view of the intention and objectives of the Act, the explanatory memorandum to the FTA Implementation Act, the provisions of the TMA, and Australia’s compliance with the TRIPS Agreement, within the scope of this decision.
In ‘Class 33’[15], which includes the goods ‘wines,’ there are 521 records of registrations or applications on the register of trade marks which include the word ‘estate’. It is a word that is common to the trade. The word ‘estate’ is used to signify the wine of one particular estate or vineyard. As such, it lacks any capacity to distinguish the goods of one winemaker from those of another. It is a word that contributes very little to the identities of the Objector’s trade marks; the part of the trade marks by which they gain the main weight of their identities is the word ‘Rothbury.’
[15] Of The International (Nice) Classification of Goods and Services
In essence, when the question is posed as to whether the Objector has used the trade mark ROTHBURY with alterations or additions which do not affect its identity, the element ESTATE ought to be disregarded, and the answer is ‘yes’, with particular force in relation to the trade marks in which the word ROTHBURY is prominent.
If I am wrong in this conclusion, it alternatively follows that each of the Objector’s registered, pending and unregistered trade marks not identical to the proposed GI certainly contain a word which is identical to the proposed GI. The Objector has demonstrated, for the reasons stated above, that the word has developed a secondary significance as denoting its goods and not their geographical origin. Therefore, the Objector has trade mark rights in the term proposed to be determined as a GI.
Likelihood of confusion
This leads me to a discussion of “the likelihood of confusion’. The issue is by no means straightforward. The first consideration is how “confusion” is to be understood and whether what I might call “the normal trade mark tests” should apply. In this context, it is worth recalling that the purpose of these provisions, as articulated in the title of the amending Act[16], is to implement the provisions of the Free Trade Agreement between Australia and the United States of America (the FTA). That purpose is to protect the rights of trade mark owners in the face of a proposal to determine a GI that will cause confusion with those trade mark rights. In order to protect trade mark rights against confusion it is the trade mark tests for confusion that are relevant. Moreover, the Act provides for the Registrar of Trade Marks to determine whether the confusion is likely. Presumably, this is because Parliament considered that the Registrar not only had the competence but also the expertise to make findings on the matter in question. The Registrar’s expertise encompasses both issues of general registrability and questions of comparison between competing rights. I am therefore satisfied that the considerations that would normally pertain when assessing potential confusion between two trade marks should also be used when applying the provisions of Section 40RC of the Act.
[16] US Free Trade Agreement Implementation Act 2004. See also paragraph 1 of this decision.
Whether the GI is likely to cause confusion will therefore be subject to a number of standard tests:
a)   By a consideration of “all the surrounding circumstances as to what is proper, normal and fair use” of the respective terms (both GI and trade mark); Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380. More recently, French J in Registrar of Trade Marks v Woolworths (‘Woolworths Metro’) (1999) 45 IPR 411 at 428 said that “All circumstances are to be taken into account. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought or sold and the character of the probable acquirers of the goods.
b)   “Not by reference to the manner in which the Applicant for registration has used its mark (in this case GI) in the past, but by reference to the use to which it can properly put the mark if it becomes registered”. Berlie v Hestia Industries Ltd (1973) 129 CLR 353 at 362.
c)   Will use of the GI [as a GI] mean “that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person retains a reasonable doubt.” (‘Woolworths Metro at [50])
d)   The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the Applicant can do if registration is obtained. See Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. [1953] HCA 73; (1954) 91 CLR 592 at pages 594-5 per Kitto J.
e)   In Coca-Cola Co v All-Fect Distributors (1998) 43 IPR 47 at [41] the Full Court said that a consideration of the likelihood of confusion would include an assessment “of what would be the visual impression on customers or potential customers which would be produced as a result of the notional normal and fair use” of the signs. Moreover, “customers are not to be credited with any high perception or habitual caution. On the other hand exceptional carelessness or stupidity may be disregarded.”
I will observe now that the words involved in decisions such as this one may function either as geographical place names; or, may allude to a geographical place; or be fancy words; or may have become dedicated to public use as being descriptive or generic; or, be geographical indications; or, indeed, trade marks. Differences between these categories may blur or a word might, through usage, mutate or migrate from one class to another. Each class of words has different legal consequences that might flow from its use or misuse, and each may have different classes of users who can make appropriate use of them. The distinctions between these classes of words are fundamental to the reasoning in this decision.
Use as a GI
Section 4 of the Act defines a geographical indication as follows:
‘(geographical indication), in relation to wine, means:
(a)a word or expression used in the description or presentation of the wine to indicate the country, region or locality in which the wine originated; or
(b)a word or expression used in the description and presentation of the wine to suggest that a particular quality, reputation or characteristic of the wine is attributable to the wine having originated in the country, region or locality indicated by the word or expression.’
Section 40ZA provides for the establishment of a ‘Register of Protected Names’ (the “Register”). When determining whether a GI should be entered onto the Register the Committee must consider both the appropriateness of the word or words proposed for the name and the boundary.[17] While neither is the subject for consideration in these proceedings, it is relevant to note that a term is not determined as a GI simply by virtue of being a geographic term that is somehow related to the production of wine. It must meet criteria that include a consideration of the extent to which, if any, there is a history of use or reputation associated with the term[18]. Moreover, the restrictions against use of a term, once determined, and the penalties associated with misuse[19], go well beyond what might appropriately apply to the simple name of a geographic place.
[17] Section 40T and Regulations 24 & 25 set out the relevant criteria.
[18] Regulation 25(h).
[19] Both are set out in Division 2 of part VIB of the Act.
The Applicant has submitted that a GI is a purely descriptive term (and that such use was not likely to cause confusion). It points to the definitions contained in Section 5C of the Act that expressly allows that use of a word or expression in an address may constitute use of the GI. However, those provisions serve both to define the term and to set out the scope of the context for possible misuse (the description and presentation with which wine is sold, exported and imported).
Once a GI is registered, the Act prohibits the false or misleading use of that term in the description and presentation of wine, including as an address.[20] This use of a term, as part of an address, will constitute use of the registered GI. However, it is not at all clear that use of a term, as an address, can constitute use of the GI before the term is registered. Nor does use of a term in the description and presentation of wine necessarily make that term a GI. Indeed, the criteria for determining a GI includes consideration of “the extent it is known to wine retailers beyond the boundaries”. Predictably, use of a locality as part of an address, in small font on the back label of a bottle of wine will do little by itself to build this reputation.
[20] Section 5C of the Act defines the meaning of “description and presentation”.
On the other hand, typically a GI will be used to promote the reputation of an area and protect the investment associated with building that reputation. It is not fanciful to suggest that this is why parties apply for the determination of a particular area as a GI. They hope that it will serve this purpose. They will seek to use it in a manner to distinguish wines from that area from wines from other areas. It matters not, whether the producers in a GI pursue this objective vigorously and successfully or not. The GI can be used in this way. It can be used for example, to promote the reputation of a particular area or region for consistent production of high quality grapes that leads to premium wine production. It can be used to distinguish that wine from the wine of other areas. The wine can be labelled or marketed as for example a “Coonawarra red”.
All this suggests that use of a term “as a GI” in pursuit of its purpose, (rather than simply use of the GI whether in an address or otherwise) is use that works to build a secondary meaning in the term, a connotation or significance beyond the simple indication of geographic location. Use as a GI would include use of the term on labels, marketing, promotion, advertising and other activities of this ilk that lead to the creation of a reputation associating the name designated with the production of wine.
Moreover, once determined, Part VIB of the Act provides that any producers in the region may use the term to build that reputation. It simultaneously works to prevent any other producers from using the term in the description and presentation of wine, where the grapes do not originate from the region denoted by the term. This includes inter-alia use of a trade mark that contains the GI. Thus, determination of a term as a GI serves at once to build the reputation, signification or connotation associated with the term as a GI, and to undermine the connotation or signification associated with rights subsisting in confusingly similar prior trade marks rights.
In light of this discussion, the question of confusion essentially boils down to “What is the likelihood that a person would be confused about the trade source or the true place of origin of the goods upon seeing “Rothbury” used “as a GI”, (or used in any way in which a GI could reasonably and fairly be used)?”.
The effect of a condition or limitation
Subsection 40RB (2) provides:
(2) The owner may object on the ground specified in paragraph (1)(c) even if there are conditions or limitations entered on the Register of Trade Marks suggesting that the owner does not have trade mark rights to that word or expression.
I note that subsection 2 applies only to paragraph (1)(c) and not to the previous paragraphs. As indicated earlier there is a presumption built into 1(a)&(b), that if the term the GI is being compared with is the trade mark, then rights do not need to be established, they are assumed. Thus the effect, and therefore existence of, a condition or limitation is irrelevant to the consideration of 1(a)&(b).
If however the relevant term is a subset only of the trade mark then paragraph (1)(c) applies and subsection 2 must be considered. In this case as Mr Catterns, for the Objector, observed, first and foremost the section answers the initial concern about any endorsements on a registration.

100. The consequence of the inclusion of this provision in the Act is expressly that I am to look at the effect of the registrations in all of the circumstances. In this context, the endorsement itself provides no barrier to a finding that the owner has trade mark rights in a term. That said, a condition or limitation reflects the status of the sign at the time of consideration, and therefore suggests that it may be more difficult for an owner to establish that they have rights in the sign. However, my task is to consider what the evidence before me now shows.
The import of an entry in the EC Agreement
101. The TVPL application cites the fact that the list of names annexed to the EC Agreement includes ‘Rothbury’ as evidence that the term is already recognised as a GI. Indeed, the Applicant puts some weight on this argument. Mr Catterns for the Objector argues on the other hand, that that list was nothing more than a “wish list” a “reservation statement” designed so that if it were subsequently shown that the subregion were a GI it could receive protection. The Objector supports this statement with a long excerpt from the list of possible subregions “many of which would never have appeared on a wine label or been used to promote a wine or its place of origin.” The Objector also submitted that the removal of ‘Rothbury’ from the draft list for the renegotiated treaty, which is to replace the EC Agreement, underscores this point. While I agree with this submission, the entry of Rothbury onto the list suggests, at the very least, that someone in the wine industry, or Government, entertained the possibility that Australia might want to protect the term Rothbury in the future. Its removal from the list suggests that no more weight than this should be placed upon it. Whether it is entered onto the AWBC’s Register of Protected Names will depend on the outcome of the present application.
The value of technical evidence
102. In general, Mr Burley submitted, for the Applicant, that many of the documents relied upon by the Objector were technical in nature and related to the appropriateness of the application before the Committee. As such, he submitted that they were not material to the grounds before me. To the extent that this is true, the principle also logically applies to similar material submitted by the Applicant, including significant proportions of technical material in the TVPL application and material submitted by Mr Tyrrell.
103. Clearly, it is not my role to consider the relevance of geology or landforms for the purposes of determining a boundary nor to consider any of this material in relation to the appropriateness of a particular name. However, much of that material might be relevant to the question of how the term ‘Rothbury’ is perceived and understood within the trade and by the general public, and this issue is central both to the question of the scope of trade mark rights and to the possibility of confusion.
104. The Hunter Valley, for example, has more or less accepted boundaries that follow landforms, and has an internal geology and microclimate, which enable it to be seen and accepted as a discrete area from a viewpoint divorced from its suitability as a GI. The Hunter Valley is thus appreciated as an area in its own right and when the words THE HUNTER VALLEY are used and understood, they are accepted as denoting the ‘gestalt’ of a specific area. THE HUNTER VALLEY carries a meaning and ‘baggage’ beyond mere words on a page and has a force to which the local population, industry, agriculture, landforms, climate, vegetation, geology, history, etc have all contributed. This factor has some potency in the assessment of any likelihood of confusion – the specific force or baggage carried by the word proposed for the GI may contribute to, or militate against, the likelihood of confusion. For convenience, I will refer to this phenomenon as the gestalt of the word ‘Rothbury’.
105. The other ‘driver’ in this approach to my analysis is, of course, whether the evidence reveals that vineyards and wineries are associated with the gestalt of the word ‘Rothbury’ to the extent that the word has been in fact used as a GI – this is a factor that may contribute to the exercise of my discretion.
106. As these factors will feed into my reasoning, it is appropriate at this time to consider what the word ‘Rothbury’ imports either as a word of some potential geographical significance, as a gestalt, or as a trade mark.
107. I turn now to what the evidence shows.
The significance or meaning of the term ‘Rothbury’
108. Words take on a geographical significance under the TMA in relation to goods if those goods are made in that place and the place name is also honestly needed by other traders in the normal course of trade to use to describe the origin of their goods or services: Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (the trade mark MICHIGAN); another example is OxfordUniversity Press v Registrar of Trade Marks (1990) 24 FCR 1 (the trade mark OXFORD). If no goods are (or can be) made in an area with reference to the name of that area, the word may be arbitrary or fanciful when used as a trade mark, as in the example given by Kitto J in Clark, above, of the word NORTH POLE when used in relation to bananas. One could add the example of SAHARA for ocean cruises. If the words NORTH POLE and MICHIGAN are opposite ends of a geographical continuum, many words with actual or potential geographical significance will fall at either end or somewhere in between: Re Application by Cedarapids Inc 13 IPR 297 (CEDARAPIDS[21]); Jonsered Motor Aktiebolag, Re [1993] ATMO 23 (12 March 1993); 27 IPR 267; 90-978 (JONSERED[22]); Tijuana Smalls (1973) RPC 453 (TIJUANA[23]). It has long been a principle that, considered prima facie as a potentially registrable trade mark, a place name is not geographical only because it is the name of a place on Earth: Magnolia Metal Co. v. Atlas Metal Co. (1897) 14 RPC 389 (MAGNOLIA[24]).

176. The first and most obvious such circumstance is reflected in Note 1 which draws my attention to the principle of “first in time, first in right”; “Was the GI in use before the trade mark rights arose?” In considering any use of the proposed term I should take account of:
·     The extent of such use, in volume and duration;
·     Its nature; whether it was use as a purely descriptive sense or use as a GI; and
·     If there has been use, whether any actual instances of confusion have been extablished.

177. However, as discussed above, there has been very little use of the word Rothbury in relation to the sale and marketing of wine (other than by the Objector). What little there has been could hardly be said to be use of the term as a GI such that it could be said that “the GI was in use” before the trade mark rights arose. The evidence shows that there is very little use of the term Rothbury as reference to a geographic locale. The vast majority of those wineries within the proposed boundary even use another locale for their address. There was no evidence provided of producers referring to their wine as coming from Rothbury. There is thus no evidence that ‘Rothbury’ has or has had an established reputation in relation to wine prior to the acquisition of rights by the trade mark owner. There is no evidence that the word Rothbury is or has ever been used “as a GI”.
178. Other circumstances to consider will include the relative inconvenience to the parties by allowing the GI to be determined or not.
a)The inconvenience to the Applicant will be greater to the extent that there has been use of the term as a GI. It will be less where there are other obvious or reasonable alternatives for the Applicant to use. In this matter, no evidence was presented of use of the proposed term as a GI, or even more loosely in the promotion or marketing of Rothbury as the origin of a particular wine. The evidence also shows that wineries in the region predominantly use the GI “Hunter Valley”, “Lower Hunter Valley” or the term “Pokolbin” to promote their wines. There are therefore other terms available than the one applied for, and these are already being used. What little commercial use there has been of the term Rothbury (other than by the Objector), in relation to wine, relates to its use in an address. I note that Section 122 of the TMA indicates that a trade mark is not infringed if a person uses the sign to indicate the geographical origin of the goods or services. Thus, the protection of the term Rothbury as a GI is not necessary to allow what little use there has been to continue.
b)The inconvenience for the Objector however, would seem to be considerable if the term Rothbury were allowed to be determined as a GI. Issues to be considered here will include:

·      Dilution of the reputation built over many years in both domestic and export markets;
·      The possible diversion of trade as a result of confusion in the marketplace;
·      Confusion in the marketplace may lead to the possibility that the Objector would need to re-brand their product; and
·      The effect of determination of a term as a GI is to prohibit false and misleading use of the GI.

179. On the evidence provided, all four factors are a consideration in this case. While the extent of each of the first three factors is subjective, the evidence does show that they are material. For instance, I found earlier that any reputation associated with the word Rothbury in relation to wine seems to be the product of the promotion of the Objector’s trade marks. In relation to the fourth factor, the Objector provided evidence that a significant proportion of its wine was sourced from outside Rothbury, from other parts of the Hunter Valley, from Mudgee, and from elsewhere. Determination of the term as a GI would, through the false and misleading provisions of the Act[38], prevent continued use of the trade mark in relation to these wines.
[38] Sections 40D and 40F.
180. The relative inconvenience to the parties thus weighs heavily with the Objector.
181. It would in these circumstances be unreasonable to recommend that the trade mark be constrained by the determination of the GI.
182. In light of this discussion I am not satisfied that it would be reasonable to exercise the discretion given to me under S40RC(3) and I refuse to do so.
Summary
a)The evidence shows some minor use of the word ‘Rothbury’ in relation to an ill-defined area in the Lower Hunter Valley. Most people appear to place this area within the Pokolbin wine growing region and Pokolbin is the place of manufacture almost invariably nominated on the wine labels in evidence and in the addresses of people and businesses in the area. On the evidence before me, the word ‘Rothbury’ has no gestalt or force either in relation to viticulture, other produce, or industry, in the area but has some force as denoting social and cultural activities or structures within an ill-defined area. This is unconnected with any potential that it might have as either a geographical word in terms of the TMA or as a GI.
b)Most people and businesses within the area covered by the proposed GI appear to identify their geographical location by use of the word ‘Pokolbin’.
c)The administrative Parish of Rothbury, and its boundaries, is unknown to many of its residents and the term appears to be used only in relation to identifying real property in the transfer of land title.
d)The word ‘Rothbury’ thus has very little force as a geographical word.
e)The evidence also shows that the word ‘Rothbury’ has developed a secondary meaning as denoting the wines of the Objector, distinct from whatever geographical origins it might have had.
f)Because a GI can be used in a trade-mark-like manner to promote the term as denoting the source of origin of the wine, the use of ‘Rothbury’ as a GI would be confusing with the registered trade mark “The Rothbury Estate”.
g)The word ‘Rothbury’ has acquired a secondary meaning to denote the Objector and it wines. The Objector therefore has trade marks rights in the word “Rothbury” (in relation to wine). The use of ‘Rothbury’ as a GI would be confusing with the term ‘Rothbury’ which is contained in the registered mark “The Rothbury Estate” and which consists of the Objector’s pending mark Rothbury.
h)Because a GI is territorially based, and its use is open to all that live within it, but the Objector’s trade marks are not, the use of the word Rothbury as a GI would, because of the reputation of the trade marks, be confusing.
i)The likelihood of confusion is not ameliorated by any widespread appreciation of any force in the word ‘Rothbury’ other than as a trade mark and a place name of minor significance.
j)The Objector has made out its grounds of objection.
k)There are no circumstances satisfying me that it would be reasonable to exercise my discretion to recommend determination of the GI.

An appeal to this decision may be made to the Federal Court under Section 40RF of the Act.
I give notice that, the grounds being made out, and subject only to the outcome of an appeal against this decision, the GI Committee of the AWBC (the Committee) may not determine the GI without the consent of the Objector.
Michael Arblaster
Deputy Registrar of Trade Marks
13 June 2008

Schedule A

Statutory Background

Relevant to this matter, Section 4 of the Act defines ‘geographical indication’ as:
geographical indication, in relation to wine, means:
(a) a word or expression used in the description and presentation[39] of the wine[40] to indicate the country, region or locality in which the wine originated[41]; or
[39] presentation, in relation to wine, has a meaning affected by section 5C.
[40] wine means an alcoholic beverage produced by the complete or partial fermentation of fresh grapes or products derived solely from fresh grapes, or both, and includes a grape product declared by the regulations to be wine for the purposes of this Act.
[41] originate, in relation to wine, has the meaning given by section 5D.
(b) a word or expression used in the description and presentation of the wine to suggest that a particular quality, reputation or characteristic of the wine is attributable to the wine having originated in the country, region or locality indicated by the word or expression.

Sections 5C and 5D of the Act, footnoted in the above, provide:
5C Meaning of description and presentation
In this Act, a reference to the description and presentation with which wine is sold, exported or imported is a reference to all names (including business names) or other descriptions, references (including addresses), signs, designs and trade marks used to distinguish the wine and appearing:
(a)         on the container (including on the device used to seal the container or on a label affixed to the container), on any tag attached to the container or, if the container is a bottle, on the sheathing covering the neck of the bottle; or
(b)         on protective wrappings (such as papers and straw envelopes of all kinds), cartons and cases used in the packaging of the wine or the transport of the wine; or
(c)         in documents relating to the transport of the wine or in other commercial documents (for example, invoices or delivery notes) relating to the sale or transport of the wine; or
(d)         in advertisements relating to the wine.

5D Where wine originates
For the purposes of this Act:
(a) a wine is taken to have originated in a foreign country or Australia only if the wine is made from grapes grown within the territory of that country or of Australia, as the case may be; and
(b) a wine is taken to have originated in a particular region or locality of a foreign country or of Australia only if the wine is made from grapes grown in that region or locality.

In relation to trade marks, the Act makes the following provisions:

trade mark has the meaning given in the Trade Marks Act 1995.
Register of Trade Marks means the register kept under section 207 of the Trade Marks Act 1995.
registered owner, in relation to a trade mark, means the person in whose name the trade mark is registered under the Trade Marks Act 1995.
registered trade mark means a trade mark whose particulars are entered in the Register of Trade Marks under the Trade Marks Act 1995.
pending, in relation to an application for the registration of a trade mark under the Trade Marks Act 1995, has the meaning given in that Act.

Grounds of Objection

The Act provides the following grounds of objection to the determination of a GI:

40RB Grounds of objection to the determination of a geographical indication
Registered owner of a registered trade mark
(1)       The registered owner of a registered trade mark may object to the determination of a proposed GI on one of the following grounds:
(a)       that the trade mark consists of a word or expression that is identical to the proposed GI;
(b)       that:
(i)        the trade mark consists of a word or expression; and
(ii)       the proposed GI is likely to cause confusion with that word or expression;

(c)       that:
(i)        the trade mark contains a word or expression; and
(ii)       the proposed GI is likely to cause confusion with that word or expression; and
(iii)      the owner has trade mark rights in that word or expression.

(2)       The owner may object on the ground specified in paragraph (1)(c) even if there are conditions or limitations entered on the Register of Trade Marks suggesting that the owner does not have trade mark rights to that word or expression.
Trade mark pending
(3) If a person has an application pending for the registration of a trade mark under the Trade Marks Act 1995, the person may object to the determination of a proposed GI on one of the following grounds:
(a)       that:
(i)        the application was made in good faith; and
(ii)       the trade mark consists of a word or expression that is identical to the proposed GI; and
(iii) prima facie, the requirements under the Trade Marks Act 1995 for accepting an application for registration of a trade mark would be satisfied in respect of the trade mark applied for;

(b)       that:
(i)        the application was made in good faith; and
(ii)       the trade mark consists of a word or expression; and
(iii)      the proposed GI is likely to cause confusion with that word or expression; and
(iv) prima facie, the requirements under the Trade Marks Act 1995 for accepting an application for registration of a trade mark would be satisfied in respect of the trade mark applied for;

(c)       that:
(i)        the application was made in good faith; and
(ii)       the trade mark contains a word or expression; and
(iii)      the proposed GI is likely to cause confusion with that word or expression; and
(iv) prima facie, the requirements under the Trade Marks Act 1995 for accepting an application for registration of a trade mark would be satisfied in respect of the trade mark applied for; and
(v)       after registration, the applicant would have trade mark rights in the word or expression.

Trade mark not registered
(4)       If a person claims to have trade mark rights in a trade mark that is not registered, the person may object to the determination of a proposed GI on one of the following grounds:
(a)       that:
(i)        the trade mark consists of a word or expression that is identical to the proposed GI; and
(ii)       the person has trade mark rights in that word or expression; and
(iii)      the rights were acquired through use in good faith;

(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.

Provisions of the Trade Marks ACT 1995 (the TMA)

Turning to section 17 of the TMA; it defines ‘trade mark’ as being:

17 What is a trade mark?
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.

The use of a sign as a trade mark, within section 17, above, is defined within section 7 of the TMA:

7 Use of trade mark
(1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note: For prescribed court see section 190.

(2)     To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.
(3)     An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.
(4)     In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second hand goods).

(5) In this Act:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

Further, concerning the use of a trade mark, section 228 of the TMA provides:

228 Use of trade mark for export trade
(1)       If:
(a)       a trade mark is applied in Australia:
(i)        to, or in relation to goods that are to be exported from Australia (export goods); or
(ii)       in relation to services that are to be exported from Australia (export services); or

(b) any other act is done in Australia to export goods or export services which, if done in relation to goods or services to be dealt with or provided in the course of trade in Australia, would constitute a use of the trade mark in Australia;
the application of the trade mark or the other act is taken, for the purposes of this Act, to constitute use of the trade mark in relation to the export goods or export services.

Note:   For applied to or in relation to goods and applied in relation to services see section 9.
(2)       Subsection (1) applies to an act done before 1 January 1996 as it applies to an act done on or after that day, but it does not affect:
(a)       a decision of a court made before that day; or
(b)       the determination of an appeal from such a decision.

Schedule B

Grounds notified by the Objector.

The grounds notified by the objector are that:
1.   The Objector is the owner of five registered trade marks (details of which are set out in Schedule A) (the Registered Trade Marks).
(a)       The Registered Trade Marks each consist of a word or expression that is identical to the Proposed GI.
(b)       The Registered Trade Marks:
(i)        each consist of a word or expression; and
(ii)       the Proposed GI is likely to cause confusion with that word or expression.

(c)       The Registered Trade Marks:
(i)        each contain a word or expression; and
(ii)       the Proposed GI is likely to cause confusion with that word or expression; and
(iii)      the Objector has trade mark rights in that word or expression.

2.   The Objector’s use and proprietorship of each of the Registered Trade Marks (whether by itself or through its predecessors in business) substantially predates the application to register the Proposed GI as a GI.
The Objector has applied for registration of three trade marks under the TM Act (details of which are set out in Schedule B) (the Pending Trade Marks).
(a)       The Pending Trade Marks:
(i)        were each applied for in good faith; and
(ii)       each consist or a word or expression that it is identical to the Proposed GI; and
(iii)      prima facie, the requirements under the TM Act for accepting an application for registration of each of the Pending Trade Marks would be satisfied in respect of each of the Pending Trade Marks.

(b)       The Pending Trade Marks:
(i)        were each applied for in good faith; and
(ii)       each consist of a word or expression; and
(iii)      the Proposed GI is likely to cause confusion with that word or expression; and
(iv)      prima facie, the requirements under the TM Act for accepting an application for registration of each of the Pending Trade Marks would be satisfied in respect of each of the Pending Trade Marks.

(c)       The Pending Trade Marks:
(i)        were each applied for in good faith; and
(ii)       each contain a word or expression; and
(iii)      the Proposed Gf is likely to cause confusion with that word or expression; and
(iv)      prima facie, the requirements under the TM Act for accepting an application for registration of each of the Pending Trade Marks would be satisfied in respect of each of the Pending Trade Marks; and
(v)       after registration, the Objector would have rights in that word or expression.

3.   The Objector's use and proprietorship of the trade mark the subject of each of the Pending Trade Marks (whether by itself or through its predecessors in business) substantially predates the application to register the Proposed GI as a Gl.
4.   The Objector is the owner of the unregistered, common law trade marks ROTHBURY and ROTHBURY ESTATE (the Common Law Trade Marks).
(a)       The Common Law Trade Marks:
(i)        consist of a word or expression that is identical to the Proposed GI; and
(ii)       the Objector has trade mark rights in that word or expression; and
(iii)      those rights were acquired by the Objector through use in good faith of the Common Law Trade Marks.

(b) The Common Law Trade Marks:
(i) consist of or contain a word or expression; and

(ii)       the Proposed GI is likely to cause confusion with that word or expression; and
(iii)      the Objector has trade mark rights in that word or expression; and
(iv)      those rights were acquired by the Objector through use in good faith of the Common Law Trade Marks.

5.   The Objector's use and proprietorship of each of the Common Law Trade Marks (whether by itself or through its predecessors in business) substantially predates the application to register the Proposed GI as a Gl.
6. The Proposed GI does not constitute a proper subregion for the purposes of the AWBC Act and the Australian Wine and Brandy Corporation Regulations 1981 (Cth).
7.   ROTHBURY is not a proper name for any GI, including, without limitation, the Proposed GI.
8.   The Proposed GI is not, and has never been used as, a GI.
9.   It is not the consensus of grape growers and winemakers in the Lower Hunter Valley that the Proposed GI be registered as a subregion.
10. By reason of the matters set out above, and otherwise in the circumstances of the case, the Registrar should:
(a)       determine that the grounds of objection specified above have been made out; and
(b)       notify the Applicant for the Proposed GI, the Objector and the Geographical Indications Committee that the grounds of objection specified above have been made out.

205 Deputy Registrar of Trade Marks

(1) …

(2)Subject to any direction by the Registrar, a Deputy Registrar has all the powers and functions of the Registrar, except the powers of delegation under section 206.

(3)A power or function of the Registrar, when exercised by a Deputy Registrar, is taken to have been exercised by the Registrar.

727340	THE ROTHBURY ESTATE
780828
896239
910882
988237	THE ROTHBURY PAN