Samuel Smith & Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd

Samuel Smith & Son Pty Ltd brought an action against Pernod Ricard Winemakers Pty Ltd, alleging that Pernod Ricard had infringed its registered trade mark THE SIGNATURE by using the sign BAROSSA SIGNATURE in relation to table wine. The dispute was heard and determined by the Federal Court of Australia. The key legal issues for the Court to decide were whether Pernod Ricard had used the impugned sign as a trade mark, whether the impugned sign was deceptively similar to the registered mark, and whether the reputation of the registered mark was relevant to the question of deceptive similarity.

The Court found that Pernod Ricard had not used the impugned sign as a trade mark, as it was used in the context of a sub-brand and not to indicate the source of the goods. The Court also found that the marks were not deceptively similar, as there were both similarities and differences between them. The Court emphasised that the relevant comparison was between the normal use of the registered mark and the impugned sign, and that the trade setting and crowded market were relevant considerations in determining deceptive similarity. The Court concluded that the reputation of the registered mark was not a relevant factor in determining whether the marks were deceptively similar.

Given these findings, the Court dismissed Samuel Smith & Son Pty Ltd's application for relief on the basis of trade mark infringement. The Court noted that if it had been necessary to answer the third question, it would have determined that issue against Pernod Ricard. The final order of the Court was that the application was dismissed.