Woolworths Limited v Constellation New Zealand Limited

Woolworths Limited (Woolworths) appealed to the Full Federal Court against a decision of a single judge that found it had infringed Constellation New Zealand Limited's (Constellation) trade mark. The dispute concerned the use of the word "ORIGINAL" in relation to wine products. Constellation, the owner of the registered trade mark "ORIGINAL" for wine, alleged that Woolworths' use of the same word on its own-brand wine products constituted trade mark infringement.

The primary legal issue before the Full Federal Court was whether Woolworths' use of the word "ORIGINAL" on its wine labels was likely to deceive or cause confusion as to the origin of the wine, thereby infringing Constellation's registered trade mark. This required the court to consider the scope of protection afforded to Constellation's mark and the nature of Woolworths' use of the word.

The Full Federal Court held that the single judge had erred in finding trade mark infringement. The court reasoned that the word "ORIGINAL" was descriptive of the wine, indicating that it was the first or earliest version of that particular wine. In the context of wine marketing, such a descriptor was unlikely to be perceived by consumers as indicating a specific trade source. The court applied the principle that descriptive words, while capable of registration as trade marks in certain circumstances, are afforded a narrower scope of protection, particularly when their use by others is in a purely descriptive and non-distinctive manner. The court found that Woolworths' use of "ORIGINAL" was in its ordinary descriptive sense and not as an indicator of trade origin, thus not infringing Constellation's mark.

The appeal was allowed, and the orders of the single judge were set aside.