Southcorp Wines Pty Ltd

This matter concerned a trade mark application by Southcorp Wines Pty Ltd for the words "QUEEN ADELAIDE REGENCY" in respect of wines. The Registrar of Trade Marks was required to determine whether the application could proceed to registration, and if so, whether any conditions were necessary. The core of the dispute arose from the inclusion of the word "ADELAIDE" within the proposed trade mark, which is a registered geographical indication under the Australian Wine and Brandy Corporation Act 1980 (AWBC Act).

The legal issues before the Registrar were whether the proposed trade mark, when used on wines not originating from the geographical region of Adelaide, would constitute a "false description and presentation" under the AWBC Act, thereby rendering its use contrary to law and providing grounds for rejection of the trade mark application under paragraph 42(b) of the Trade Marks Act 1995. The Registrar also had to consider whether the applicant's arguments that the word "ADELAIDE" was not used in a geographical sense, but rather as part of a historical reference, were sufficient to avoid the application of the AWBC Act provisions.

The Registrar reasoned that, despite the applicant's submission that the word "ADELAIDE" in the trade mark "QUEEN ADELAIDE REGENCY" was not intended to indicate geographical origin and was unlikely to mislead consumers, the provisions of section 40D of the AWBC Act were clear. This section defines a "false description and presentation" as including a registered geographical indication applied to wine that did not originate in the specified region, irrespective of whether the use was misleading. The Registrar found that the word "ADELAIDE" was a registered geographical indication and that its inclusion in the trade mark meant that any use of the mark on wine not originating from the Adelaide region would contravene section 40C of the AWBC Act. This contravention would make the use of the trade mark contrary to law, providing grounds for rejection under paragraph 42(b) of the Trade Marks Act.

Ultimately, the Registrar concluded that the application could only proceed to acceptance subject to a condition that the trade mark be used only in respect of wines originating in the geographical area for which "ADELAIDE" is registered, and in accordance with the AWBC Act. As Southcorp Wines Pty Ltd could not agree to this condition, the Registrar rejected the trade mark application.