Southcorp Limited v Barwick Wines Pty Ltd

This matter concerned an opposition by Southcorp Limited to the registration of a trade mark by Barwick Wines Pty Ltd. The opposition was heard by Jock McDonagh, a delegate of the Registrar of Trade Marks. Southcorp sought to oppose the registration on grounds under sections 41 and 43 of the Trade Marks Act, although section 41 was introduced late in the proceedings.

The primary legal issue before the delegate was whether the applied-for trade mark, which included the word "crush," was inherently adapted to distinguish the applicant's wine goods, as required by section 41(2) of the Act. The delegate also considered whether the mark had a connotation that was deceptive or confusing, pursuant to section 43, but ultimately focused on the section 41 ground.

The delegate reasoned that while "crush" is a term of art in the wine industry referring to the grape harvest or the crushing process, it did not, in this context, describe the inherent character or quality of the wine itself. The delegate noted that "crush" could be synonymous with "harvest" and that numerous wine marks containing "harvest" were already registered. Applying the principle that relevant material should not be ignored, the delegate permitted the introduction of the section 41 ground. Despite the descriptive nature of the term, the delegate found that "crush" was not necessarily synonymous with "vintage" and did not, on its own, lack inherent distinctiveness for wine.

The delegate dismissed the grounds of opposition, allowing the applicant's trade mark to proceed to registration one month from the decision date, subject to any appeal. The opponent was ordered to pay the applicant's costs.