Willunga Hundred Pty Limited

[2023] ATMO 168

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2232221 (33) – WILLUNGA 100 and device – in the name of Willunga Hundred Pty Limited

Delegate:

Louise Tuohy

Representation:

Applicant:  David Stewart of Bennett Litigation and Commercial Law

Decision:

2023 ATMO 168

Trade Marks Act 1995 (Cth) – section 33 proceedings – s 43 considered – trade mark likely to device or cause confusion – trade mark application rejected

Background

1. This decision follows from an ex parte hearing at the request of Willunga Hundred Pty Ltd (‘Applicant’) pursuant to s 33 of the Trade Marks Act 1995 (Cth)[1] (‘Act’) in relation to the following trade mark application:

   Application Number:   2232221

   Trade Mark:    (‘Trade Mark’)

   Filing Date:  30 November 2021

   Specification:  Class 33: Wine (‘Designated Goods’)

   [1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) ( ‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) ( ‘Regulations’).

2. The application was examined as required by s 31 and a ground for rejection was raised under s 43. The first examination report issued on 3 December 2021 and raised the following ground for rejection:

   Issues raised under Section 43 of the Trade Marks Act 1995.

   Your trade mark is, or contains, WILLUNGA which is the name of a wine growing area in South Australia. It is likely that purchasers of your goods would be confused or deceived about the origin of your goods if the goods did not come from that area.

   What you can do now

   You can overcome this problem by agreeing, in writing, to add this endorsement to your application:

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

3. In support of the application, the Applicant made submissions arguing that Willunga is not a location which produces wine. It is not a geographical indication of any wine region or sub-region. It happens to be a locality/township to the south of McLaren Vale on the Fleurieu Peninsula in South Australia.

4. The examiner did not find the submissions persuasive and maintained the s 43 ground for rejection. The Report stated that Willunga is an official sub-region of the McLaren Vale wine growing wine region of South Australia. As such, this is an area which is associated with wine production. The Applicant did not respond to the second examination report, instead it exercised its right to be heard.

5. The matter came before me, a delegate of the Registrar of Trade Marks on 5 October 2023. David Stewart of Bennett Litigation and Commercial Law, represented the Applicant, making verbal and written submissions on its behalf and filed the following declarations:

• Declaration of Jeremy Stevenson, Director of the Applicant, made on 3 October 2023 (‘Stevenson’).

• Declaration of Hoa Thi Nhu Nguyen, Lawyer from Bennett Litigation and Commercial Law, made on 25 August 2023, with Annexure NTH-1 (‘Nguyen’).

• Declaration of Summer Jade Pitts, Research Clerk from Bennett Litigation and Commercial Law, made on 28 September 2023, with Exhibits SJP-1 to SJP-9 (‘Pitts 1’).

• Declaration of Summer Jade Pitts, made on 3 October 2023, with Exhibits SJP-1 to SJP-2 (‘Pitts 2’).

1. The present matter is a hearing under s 33(4). As noted in MHFC Holdings Pty Ltd[2] the purpose of such a hearing is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection, in this case the ground for rejection under s 43. Any decision I shall make is not a review of the examiner’s approach and I am not bound in any way to follow it. Rather this proceeding will consider afresh the s 43 ground for rejection under the Act as it applies to the Trade Mark.

   [2] [2016] ATMO 96, [9] (Hearing Officer Wilson).

Legislative Framework

1. Under s 33(1)(b), the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise a trade mark will be presumed registrable.[3] Regarding the present application, the only ground for rejection identified is under s 43.

   [3] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16] (Sundberg J).

2. Section 43 provides:

   43  Trade mark likely to deceive or cause confusion

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

3. To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark itself. Justice Gyles in Pfizer Products Inc v Karam commented:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question …[4]

   [4] [2006] FCA 1663, [53].

1. In this matter, the Trade Mark is comprised of a number of elements, being the word and number WILLUNGA 100 and the device which comprises the letter W divided by the number 100. The Applicant submits that the Trade Mark refers to the historical ‘Hundred of Willunga’, a cadastral unit of hundred, established in 1846 to identify the boundaries of the lots of land available for sale and ownership covering the extreme southern suburbs of the Adelaide metropolitan area. Today the ‘Hundred of Willunga’ is still mentioned in the land description section on certificates of title for landholdings in the area, including the Applicant’s own vineyard in Blewitt Springs. The original ‘Hundred of Willunga’ encompassed most of the Geographical Indication (‘GI’)[5] McLaren Vale. However the Trade Mark is not the ‘Hundred of Willunga’ rather it is WILLUNGA 100. In my view WILLUNGA 100 would not be seen as a reference to the ‘Hundred of Willunga’ when applied to the Designated Goods instead the number 100 would have several different meanings for consumers with some likely to see it as a reference to top 100 wines from Willunga. As such the word element WILLUNGA in the Trade Mark is of particular importance. How that word is likely to be interpreted by persons exposed to the Trade Mark and the connotation which arises from that interpretation is relevant to the s 43 ground for rejection.

   [5] Stevenson [7], and Pitt 2 Annexure SJP-2.

2. The Columbia Gazetteer of the World[6] shows that Willunga is a small town in South Australia. It has a population of approximately 1,164 inhabitants. The evidence in Exhibits SJP-5 and SJP-6 to Pitt 1 comprises two maps which show that Willunga is a town within the McLaren Vale wine region. The map at Annexure SJP-6 identifies vineyard blocks located on the outskirts of Willunga and the map at Annexure SJP-5 pinpoints the winery cellar door locations of various wine makers in and around Willunga. Given its close proximity to vineyards, use of Willunga in connection with wine is likely to be seen by consumers as indicating the place where grapes used to make the wine were grown. I am satisfied that the inclusion of the word Willunga in the Trade Mark connotes that the Applicant’s wine is produced using grapes grown at or near Willunga, and if the wine does not have this characteristic, then consumers are likely to be deceived or confused. 

   [6] < viewed on 9 October 2023.

3. The Applicant argues that the wording in the endorsement to overcome this problem restricts the use of the Trade Mark to only “wines produced predominantly from grapes grown in the WILLUNGA area”. The endorsement describes a geographical area named Willunga but does not include a spatial definition. In addition the Applicant does not source its grapes ‘predominately’ from within a so-called Willunga area, rather it sources its grapes from within the wider McLaren Vale region.

4. Annexure HTN-1 to Nguyen comprises a copy of a letter from the Register of Protected Geographical Indications and Other Terms and General Counsel and Head of ESG and Market Access, Wine Australia. The letter states that Willunga is not included in the Register; and/or a registered geographical indication for the purposes of the Wine Australia Act 2018 (‘WAA’) or Wine Australia Regulations 2018 (‘WAR’). On this basis I am satisfied that Willunga is not an official sub-region of the McLaren Vale.

5. Exhibit SJP-9 to Pitts 1 comprises a copy of email correspondence between Ms Nguyen for the Applicant and Ms Hathaway of Wine Australia dated September 2023. The first email requests Wine Australia provide information about Willunga and the location of vineyards within the Willunga area. Ms Hathaway responded by stating that it was possible to calculate the area of vineyards within any given area if that area is clearly spatially defined. The Applicant submits that it was unable to provide these details because Willunga is a township that sits in the Willunga Basin, and nearby is Willunga Hill, and to the west is Port Willunga and the proper mechanism for doing so is by way of the Geographical Indications Committee.

6. The Applicant argues that the endorsement requirement of ‘predominantly’ is vague and if accepted requires it to source an uncertain amount of grapes, ‘mostly’ from Willunga if sold under the Trade Mark.

7. In Stevenson, Mr Stevenson states that reg 26 of the WAR describes the Label Integrity Program, including the ‘85% rule” as it applied to GIs. The Applicant uses the GI McLaren Vale in accordance with the parameters set out in the WAA. This requires the use of the GI McLaren Vale on all bottles produced by the Applicant from grapes sourced from the McLaren Vale. Mr Stevenson argues that even if it were possible to source grapes from Willunga it would be a violation of the WAR to only refer to Willunga on the label and not the correct GI, namely McLaren Vale.

8. Mr Stevenson stresses that to the best of his knowledge, no consumers have ever been confused about the blend of the wines produced by the Applicant such to think that the blends did not include other grape varietals from within the McLaren Vale region. In respect of origin, consumers buy the Applicant’s wines because they are from McLaren Vale, not from Willunga.

9. I am not persuaded by the Applicant’s statements in relation to its consumers. In my view a vast bulk of wine consumers are uninformed,[7] and there is no evidence that the public has a general appreciation that wine featuring the Trade Mark is produced from grapes sourced from the wider McLaren Vale region. Furthermore, the evidence before me does not show that the Trade Mark as a whole has acquired a reputation which would replace the geographical significance of the word WILLUNGA.

   [7] C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; [2000] AIPC 91-640; [2001] ATPR 41-793; (2000) 52 IPR 42, [20] (Ryan, Branson and Lehane JJ).

10. I appreciate that the grapes used in the Applicant’s wine are not grown in Willunga nor is the production of the wine occurring there, rather the grapes are sourced from the wider McLaren Vale region. Nonetheless for the purposes of assessing s 43 a distinction needs to be made between the requirements under the WAA and WAR and the Act. The presence of Willunga on a wine bottle has the connotation that the wine is produced using grapes grown at or near Willunga, and if the wine does not have this characteristic, then consumers are likely to be deceived or confused.

11. However, I agree with the Applicant that the wording in the endorsement offered in the first examination report[8] does not clearly define the terms ‘Willunga area’ or ‘predominantly’. On 16 October 2023 I informed the Applicant it was my intention to refuse to register the Trade Mark and invited it to consider the following endorsement:

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

    [8] See also Para [2] above.

12. On 24 October 2023 the Applicant informed me that it does not consent to the proposed endorsement.

Decision

1. Section 33 provides:

   33Application accepted or rejected

   (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it.

   (2)The Registrar may accept the application subject to conditions or limitations.

   (3)If the Registrar is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

2. Under s 33, I must accept the trade mark application unless there are grounds under the Act for rejecting it. I am satisfied that there is a ground under s 43 for rejecting trade mark application number 2232221. Therefore, I reject the application.

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

30 October 2023