Winemakers Federation of Australia v Agriculture and Rural Development of European Commission EU

[2018] ATMOGI 1

AUSTRALIAN GRAPE AND WINE AUTHORITY REGULATIONS 1981

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

Re:        Opposition by the Winemakers’ Federation of Australia to an application by                 the Agriculture and Rural Development of the European Commission of the   European Union for the determination of Avola as a geographical indication

Delegate:

Katrina Brown

Parties:

Applicant: The Agriculture and Rural Development of the European Commission of the European Union
Objector: The Winemakers’ Federation of Australia

Decision:

2018 ATMOGI 1

Australian Grape and Wine Authority Regulations 1981 – objection to determination under reg 58(5)(b) – the ground has not been made out – evidence establishes that Nero d’Avola is used in Australia as the name of a variety of grapes – evidence does not establish that Avola solus is used in Australia as the name of a variety of grapes.

Background

1. The Agriculture and Rural Development of the European Commission of the European Union (‘EU’) applied to the Geographical Indications Committee (‘GIC’) for the determination of 906 foreign geographical indications (‘GIs’) for wine.

2. Pursuant to regulation 57 of the Australian Grape and Wine Authority Regulations 1981, a notice was published on Wine Australia’s website[1] on 24 May 2017 inviting persons to make written objections to the determination of any of the 906 proposed items. This notice was published on IP Australia’s website[2] on 2 June 2017 and in the Australian Official Journal of Trade Marks on 8 June 2017.

   [1]

   [2]>

   On 22 August 2017 the Registrar of Trade Marks received an objection from the Winemakers’ Federation of Australia (‘WFA’) to the determination of the proposed item, Avola.

3. On 11 September 2017 this office notified the GIC of the objection.

4. Legislation provides for both parties to simultaneously file evidence in support of their position and then to simultaneously provide evidence in answer. In this matter, the WFA filed evidence in support of its objection within the designated period to do so. The EU did not avail itself of the opportunity to file evidence in support of its application, nor did it file evidence in answer to the material filed by the WFA. 

5. After the period for filing evidence in answer was completed, this office invited both parties to request a hearing. Neither party requested a hearing and as such the matter has been delegated to me, a delegate of the Registrar of Trade Marks, to decide on the basis of:

• the notice of objection filed by the WFA;

• the evidence in support filed by the WFA; and

• any other matter that the Registrar of Trade Marks thinks is relevant.[3]

  [3] Australian Grape and Wine Authority Regulations 1981 reg 67(1).

Relevant Legislation

1. Section 4 of the Wine Australia Act 2013 defines a geographical indication (‘GI’) as follows:

   geographical indication, in relation to wine goods, means an indication that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.

2. The Wine Australia Regulations 2018 replaced the Australian Grape and Wine Authority Regulations 1981 and came into effect on 1 April 2018. The Wine Australia Regulations 2018 contain transitional provisions in relation to the determination of GIs, in which reg 118 relevantly provides:

   Despite the repeal of the Australian Grape and Wine Authority Regulations 1981 (the old Regulations)…

   (c) Part 6A of the old Regulations, as in force immediately before the repeal, continues to apply in relation to the determination of a foreign GI or translation of a foreign GI (including any decision under Division 3 of that Part on an objection) if a notice about the determination was published under regulation 57 of the old Regulations…

3. In this matter, the notice about the determination was published under regulation 57 of the Australian Grape and Wine Authority Regulations 1981 (‘the Regulations’). As such it is those regulations that are relevant to the matter at hand.

Grounds and onus

1. In the notice of objection, the WFA nominated reg 58(5) as the basis for it objecting to the determination of Avola. Regulation 58 relevantly provides:

   58 Grounds of objection to determination of foreign GI or translation of foreign GI

   …     

   (5) Common use

   A person may object to the determination of a proposed item on the ground that the proposed item is used in Australia:

   (a) as the common name of a type or style of wine; or

   (b) as the name of a variety of grapes.

2. Although the WFA’s notice of objection cited all of reg 58(5), the particulars of the notice and the evidence that followed it are such that I take it that the WFA objects to the determination of the proposed item under paragraph (b), alleging that Avola is used in Australia as the name of a variety of grapes.

3. The WFA bears the onus of establishing the ground of objection.[4] The standard of proof is the ordinary civil standard of the balance of probabilities.[5]

   [4] Winemakers’ Federation of Australia v European Commission [2013] ATMOGI 1 [23].

   [5] Ibid.

Evidence

1. As stated earlier in this decision, the WFA filed evidence in support of its objection. The material includes the following:

• The 2013 edition of the International Organisation of Vine and Wine’s International list of vine varieties and their synonyms.[6] Nero d’Avola is listed as a vine variety of Australia. There are no synonyms listed for Nero d’Avola.

  [6] from Wine Australia showing that 31,245 litres of Nero d’Avola or Nero d’Avola blends were exported from Australia between November 2013 and November 2017.

• Data extracted from Vinehealth Australia Vineyard Register on 6 December 2017. The data relates to Nero d’Avola plantings in South Australia and shows that there are: 7 regions within South Australia that have Nero d’Avola plantings (Adelaide Hills, Barossa, Clare, Currency Creek, Eden Valley and Riverland); 28 different vineyard owners; and 7.6 hectares of Nero d’Avola in South Australia.

• A tax invoice from Binjara Vine Nursery Pty Ltd dated 1/9/2009 in relation to ‘Vinifera Cuttings – Nero d’Avola’ and an agreement dated 15/9/2009 between Chalmers Nurseries Pty Ltd and Thorpe Wines Pty Ltd for the purchase of Nero d’Avola cultivars.

• A letter from Kim Chalmers, Director of Chalmers Viticulture Pty Ltd, dated 2/1/2018. The letter details the importation and distribution of the ‘grape variety Nero d’Avola in Australia’.

• An excerpt from James Halliday’s Wine Companion website[7] which states that Nero d’Avola ‘is now being made in Australia’ and ‘there are more than 55 Nero d’Avola vineyards in Australia’.

• Pictures of wine bottles described as examples of current Australian wine brands/labels made from Nero d’Avola grapes.

• A copy of the Registrar of Trade Mark’s decision - Winemakers’ Federation of Australia v European Commission [2013] ATMOGI 1.

• An email from Brad Hickey the Winemaker and Co-Director of Brash Higgins Wine Co. in McLaren Vale, South Australia stating: that they were the first to graft cuttings in McLaren Vale in 2009; their first release of Nero d’Avola in 2011 won “Best Emerging Red’ at the Good Food and Wine Awards in 2012; the 2015 vintage won the “Rule Breaker” award at the South Australian Hot 100 Wine Show; their wine is called NDV.

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• In the notice of objection, the WFA submits that:

  The term “Avola” is a part name of the common internationally recognised grape variety produced in Australia and internationally. The grape variety (full name) “Nero d’Avola” is a common Australian wine grape which is prominent with Australian wine brands and growing in popularity.

  …

  This opposition is lodged on the grounds that Nero d’Avola is a commonly used grape wine varieties [sic] which is produced in Australia and markets across the world.

1. The wording of reg 58(5)(b) is a convenient starting point for my reasoning in this matter. It states that ‘a person may object to the determination of a proposed item on the ground that the proposed item is used in Australia as the name of a variety of grapes’. Unlike other grounds for objecting to the determination of a foreign GI,[8] reg 58(5)(b) does not make reference to the proposed item being likely to cause confusion with a word, expression or other indication being used in Australia. The question posed by reg 58(5)(b) is whether, as a matter of fact, the proposed item is used in Australia as the name of a variety of grapes. As such, I do not think it is open to me to simply find that the ground has been made out where the proposed item only forms part of the name of a variety of grapes. That said there may well be exceptions, such as where the evidence establishes that the proposed item has been used in Australia to the extent that it is regarded as the shortened name of a variety of grapes.

   [8] See regs 58(1); 58(3) and 58(4) of the Regulations.

2. The evidence in this matter demonstrates that Nero d’Avola is used in Australia as the name of a variety of grapes. The letter from Kim Chalmers, Director of Chalmers Viticulture Pty Ltd details the history of Nero d’Avola in Australia as follows:

   Bruce and Jenni Chalmers, through their business Chalmers Nurseries Pty Ltd of Euston NSW, imported a selection of Nero d’Avola…The selection was identified as Nero d’Avola MAT 1.

   This selection was released to Chalmers out of Australian Government Quarantine in May 2000. The single plant was propagated over a couple of seasons and a mother black was established in 2002 at the Chalmers property in Euston NSW…

   The first vines of Nero d’Avola were sold in 2006 and have been propagated and sold every year since across most wine growing states in Australia.

3. According to the International Organisation of Vine and Wine’s International list of vine varieties and their synonyms, Nero d’Avola has been a recognised grape variety in Australia since September 2011. The article on the Wine Companion website, statistics from Wine Australia and Vinehealth Australia, awards given to Brash Higgins Wine Co. and labels of Australian wine bottles further substantiate that Nero d’Avola is used in Australia as the name of a variety of grapes.

4. However, in this matter the proposed item being objected to is Avola, not Nero d’Avola. The evidence before me demonstrates that the proposed item Avola is contained within the name of a variety of grapes, namely Nero d’Avola. However, this does not automatically equate to use of Avola as the name of a variety of grapes. Further, the evidence does not demonstrate that there is a tendency for Nero d’Avola to be shortened to Avola in Australia, nor has the WFA suggested this is the case.

5. The WFA has also drawn my attention to the Registrar of Trade Marks decision in Winemakers’ Federation of Australia v European Commission.[9] This decision was also in relation to an objection under reg 58(5)(b) of the Regulations to the determination of Prosecco. On the basis of the evidence before them, the delegate of the Registrar of Trade Marks determined that Prosecco had been used in Australia as the name of a variety of grapes and as such concluded that the ground under reg 58(5)(b) had been made out.

   [9] [2013] ATMOGI 1 (‘Prosecco Decision’).

6. On the facts, the Prosecco Decision can be distinguished from the matter before me. In the Prosecco Decision, the proposed term being objected to was Prosecco and the evidence demonstrated that Prosecco was used in Australia as the name of a variety of grapes. In this matter, the evidence does not demonstrate that Avola is used in Australia as the name of a variety of grapes. Rather, the evidence demonstrates that it is Nero d’Avola which is used in Australia as the name of a variety of grapes.

7. On the information before me, I am not satisfied that the proposed item Avola has been used in Australia as the name of a variety of grapes. As such, the ground of objection under reg 58(5)(b) of the Regulations has not been made out.

Decision 

1. Regulation 67 of the Regulations relevantly provides:

   (1) The Registrar of Trade Marks must, as soon as practicable after the last day set for evidence to be filed, make a decision in writing whether the ground of objection is or is not made out…

2. For the reasons set out above, I find that the ground of objection under reg 58(5)(b) has not been made out.

3. This decision may be appealed to the Federal Court.

Katrina Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs Group

6 August 2018