It was not that long ago that the Australian wine industry was fairly localised, winemakers knew the names of almost all the Australian wines, the internet didn’t send information around the world instantaneously, there were no international regulations and employees were one of the family. The end of last century and the first decade of this one have brought new challenges to winemakers, whether it’s in relation to branding a product, describing the wine, protecting your rights or making sure you don’t infringe anyone else’s. 

This article takes a brief look at some of the issues that face winemakers in Australia today and which will continue to be a challenge as this decade continues.

Selection of a name

As more and more wines are produced and marketed in Australia, the selection of a name becomes more difficult. In fact, it is not just one name a winemaker may have to select but a number of names that will ultimately appear on the wine bottle label and in advertisements or other promotional material. If a winemaker is new to the industry, the first name they have to choose is the name of their vineyard or company that will make and sell the wines. Then there may be a name or brand that will be used for a range of wines and finally, the names of different wines within that range. Each name must convey something about the company behind the wine, not infringe the rights of third parties and comply with any international regulations relating to permissible names.

It is important that before settling on a name you find out whether it is available for use or whether its use will infringe another person’s rights in Australia or in any countries in which you intend to export the wine. The first step is to conduct a search of the Trade Marks Register. This can be done online but although it is might seem easy to search for a particular word or words, this is not always the case and it is advisable to have a professional conduct the search for you. In addition, you may be advised to do other searches eg searches of the White Pages and Yellow Pages and Google searches, to make sure that the name, or something similar, is not being used even though there is no registered a trade mark. If you intend to export the wine, similar searches should be conducted in the relevant countries.

Protecting the name

Once you have chosen a name for the wine, you need to consider how best to protect it. Trade mark registration is the best option as once registered, it prevents anyone else using a name that is substantially identical with or deceptively similar to your registered trade mark in relation to the same goods or goods of the same description for which your mark is registered. The protection is Australiawide. If you do not register the mark, and another winemaker starts using the same or a similar mark, then you will have to rely on the reputation you have in that particular name to stop the infringement. This is much more difficult and expensive to do.

You also need to consider whether you will export your wine and use the mark overseas. If so, then, having cleared the mark for use in overseas countries, it is prudent to also register the mark in those countries. For many years this meant filing for separate applications in each country. From 1996, it has been possible to obtain protection throughout the European Union by filing one European Community Trade Mark application but this still left many countries. Then, in 2001 Australia joined the Madrid Protocol which allowed the filing of one international application in a large number of foreign countries that are also parties to the Protocol. The US joined in 2003 and there are now 85 member countries.

Wine Australia Corporation Act 1980 (Cth) 

As the result of a number of changes last year, the Australian Wine and Brandy Corporation Act 1980 was renamed the Wine Australia Corporation Act 1980 (Cth) (WAC Act) and the Australian Wine and Brandy Corporation is now called Wine Australia. Wine Australia is a Commonwealth statutory body whose mission is “To enhance the operating environment for the benefit of the Australian wine industry by providing the leading role in: market development; knowledge development; compliance; and trade”. Part of Wine Australia’s role has been to negotiate and help implement trade agreements with other countries so that Australian winemakers can benefit from exporting their wines to other winemaking countries.

International agreements

On 1 September 2010, the 1994 Agreement between Australia and the European Community on Trade in Wine was replaced by a new agreement which has, confusingly enough, the same name. Under this agreement all Australian winemaking techniques are now accepted and the rules relating to labelling, blending requirements, alcohol levels and displaying Australian awards have been made more simple.

In order for Australia to meet its obligations, the WAC Act and the Trade Marks Act 1995 (Cth) (TM Act) were amended and the Register of Geographical Indications and Other Terms was published and made available on the Wine Australia site. As part of these amendments in September 2010, a number of new terms were added to the Register of Protected Names which means that Australian winemakers will no longer be able to use these terms whether or not they are part of a registered trade mark. In order to avoid winemakers being disadvantaged, the TM Act has been amended so that disadvantaged winemakers can request an amendment to their registered trade mark even if this will alter the identity of the mark or extend the scope of the rights.

Australia is also a party to the following agreements:

• Agreement on Mutual Acceptance of Oenological Practices – signed by Australia, New Zealand, Chile, Argentina, Canada and the US. This agreement permits a wine made in one member country to be sold in another member country whether or not the winemaking practices are legal in the importing country.
• Agreement on Requirements for Labelling – same countries signed. This agreement allows for a single global label by introducing a “single field of vision” concept. The label must contain alcohol content, product name, volume statement and country of origin. Australia is now in a position to ratify the agreement following amendments to State and Territory trade measurement legislation.

Copyright in labels

You just have to look on the shelves of liquor stores to realise that wine labels are often artistic works in themselves. Whilst many winegrowers are quite savvy about protecting rights in their names, the rights in the labels, which form part of the entire branding of the product, are equally important to protect. In the majority of cases, the label will be designed by a third party under a contract for services. If this is the case, it is important that copyright in the artistic work comprised in the label, is owned by the person or company who designed the label. It is important that you obtain an assignment in writing from the designer to you. If someone infringes your rights in the label, then it is often difficult to get the necessary assignment a few years after the label was created.

Confidentiality

Whether you are a large or small winemaker, you will not want your secrets walking out the door with a disgruntled employee. When you retain new employees who have or may have access to confidential information, it is prudent to have the employee sign a non-disclosure or confidentiality agreement at the start of their employment. This does not have to be complicated and can be done by way of a short letter or if you have a written employment agreement, an appropriate clause can be added into it. Similar precautions should be taken when engaging independent consultants. Remember that once confidential information is disclosed, there is very little that can be done apart from trying to recover damages which can be difficult, messy and expensive.

Recent decisions

E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 – the “Barefoot Radler” case

It is not often that trade mark cases get to the High Court and even less often that they involve wine related marks but last year the High Court did have to look at the question of when use in Australia, by a foreign company, is sufficient to defeat a non-use action. Gallo, a Californian winemaker, was the registered owner of the BAREFOOT trade mark, registered in Australia in class 33 for wines. The prior owner of the mark had, unkown to Gallo at the time, sold 60 cases of the wine to a German company who in turn sold some of it to a Victorian liquor wholesaler (approximately 144 bottles) and some was eventually sold to consumers. Lion Nathan lodged a trade mark application for BAREFOOT RADLER for beer in class 32. Gallo sued for infringement of trade mark and Lion Nathan cross-claimed to have Gallo’s mark removed from the Register for non-use.

The High Court found in favour of Gallo. It held that it did not matter that Gallo did not know of the Australian sales provided that the goods were still in the course of trade when they ended up in Australia (which they were). The High Court also accepted that the sale by the prior owner of the BAREFOOT mark was “authorised use” and the sales into Australia were use in good faith. It was also implicit in the High Court’s judgment that they considered wine and beer to be goods of the same description.

Foster's Wine Estates Limited v Serafino Wines Pty Ltd [2010] ATMO 81 

Serafino Wines filed an application for SERAFINO MAGLIERI for wines in class 33. In the 1980s and 1990s, Mr Serafino Maglieri, owned Maglieri Wines Pty Ltd and established a reputation as a quality wine producer. In 1998, he sold the entire business with assets (including all the brands) to what became Foster’s Wine Estates. Mr Maglieri had been using the name “Steve Maglieri” in business and he was restrained from using this name for five years following the sale. At the end of that time, Foster’s Wine Estates did nothing to negotiate an extension of the restraint. In 2000, Maglieri established Serafino Wines. 

As a result of the purchase of the business, Foster’s Wine Estates is the registered owner of the marks, MAGLIERI WINES WHEN ONLY THE BEST WILL DO, MAGLIERI and MAGLIERI OF McLAREN VALE. On this basis Foster’s Wine Estates opposed Serafino Wines’ application.

The only ground of opposition considered was that under s 44 of the Trade Marks Act 1995 (Cth) which provides that an application must be rejected if the applicant’s mark is substantially identical with or deceptively similar to another person’s registered trade mark for similar goods. The Delegate considered that whilst Serafino Wines’ mark was not substantially identical with any of Foster’s Wine Estates’ marks it was deceptively similar and registration was not allowed. Further, under the sale of business agreement, Maglieri had given up any right to use a deceptively similar mark, even if it comprised his real name.

Jack Daniel's Properties Inc v Warren Scott Harvey [2010] ATMO 47 

This was a simple opposition. Harvey’s application for JACK DOOLAN'S MUDGEE WHISKY WILD COLONIAL SPIRIT (label) was accepted in class 33 for Alcoholic beverages being whisky. Jack Daniel’s opposed the registration based on its existing registration of JACK DOOLAN for wines. The opposition was successful.