Ours is not to region why...

by: Rebecca Schiller

QUESTION:  Can a word that is commonly used in an industry, also be registered as a trade mark?  If so, in what circumstances?

 

ANSWER:  Yes, where the word is 'used as a trade mark' and 'distinguishes the trader's products' from products of competitors.

 

The recent REGIONS decision is one of a small number of cases that have dealt with this question, and provides an interesting lesson on what is needed to ensure use of a descriptive word is clearly trade mark use which is sufficient to allow a registration.   

The Australian Trade Marks Office has recently refused registration of the word REGIONS as a trade mark for alcoholic beverages including wine (1)  after Berenger Blass Wine Estates, now known as Fosters Wine Estates Limited, filed notice of opposition to registration of the trade mark.

 

Berenger Blass' intention was not to stop Mr Harris from using the word "regions" or to change the way he used it, but to ensure that Mr Harris was not the only trader with the right to use the word.  As the Trade Marks Act preserves the rights of traders to use words that are genuinely descriptive, without risk of infringing a trade mark registration for the same word, Mr Harris considered the opposition by Berenger Blass was not based on a real need to use the word, but was simply a response to a missed marketing opportunity. 

 

Although the evidence of Berenger Blass contributed to the Hearing Officer's decision, it was the evidence of Mr Harris himself which sealed the decision to refuse registration of his trade mark.

 

 

Regions

 

The word "region" has been associated with wine for many years.  In addition to its common usage in the wine trade, the word is also a component of the legal definition of "geographical indications" under the Australian Wine and Brandy Corporation Act, being "a word or expression used in the description and presentation of the wine to indicate the country, region or locality in which the wine originated".(2)

 

In describing his trade mark, Mr Harris said he had developed a concept "which specifically links the word Regions with Registered Geographical Indications from where each wine is grown".  An example label capturing this concept contains the words "Andrew Harris" at the top with a picture below, and beneath these the stylised word "REGIONS" with the words "limited edition", the name of the geographical indication "Orange Mudgee", and the wine variety "Shiraz Viognier 2004".

 

 

The question to be answered

 

Berenger Blass relied on a single ground of opposition: that the trade mark REGIONS did not distinguish Mr Harris' goods from those of other traders of wine and other alcoholic beverages.

 

The legal test for deciding the matter was in two parts.  Firstly, did Mr Harris "adapt" the word in such a way as to distinguish his products from those of wine traders?  If not, did Mr Harris' use of the trade mark sufficiently distinguish his wines from those of others?

 

The word REGIONS was considered by the examiner to be vague and non-specific on its own, and as such, able to function as a trade mark for wines.  This follows cases such as the YIELD decision, where the word YIELD was used and therefore registered as a trade mark for agricultural chemicals, notwithstanding the word 'yield' is commonly used in relation to agricultural chemicals which have a primary function of increasing a crop yield.(3)

 

The presentation of Mr Harris' labels submitted into evidence, however, led the Hearing Officer to consider that "from [Mr Harris'] perspective, the word's effectiveness would evaporate if it was not always shown in close proximity with the name of a specific wine region".  The Hearing Officer also noted that the word REGIONS was always used in combination with the words "Andrew Harris", "Limited Edition" and the relevant geographical indication, and it was this combination, rather than the word REGIONS on its own, which identified the goods as being those of Mr Harris.

 

The Hearing Officer's decision therefore turned on how REGIONS was used on the labels, and she concluded that Mr Harris did not use REGIONS as a trade mark.

 

 

Lesson to be learned

 

Ultimately, although Mr Harris considered his "unique" trade mark REGIONS to be an integral part of a marketing concept, registration was refused as REGIONS was used in such a way as to be simply a component of a larger distinguishing mark, and not a trade mark of itself.

 

The lesson to be learned is to ensure correct trade mark use including:

·      use an appropriate trade mark notice such as TM in close proximity to the mark

·      give the word separate trade mark identity by consistently using it in a unique font, colour or get-up

·      do not  always link use of the word to other trade marks to create a composite marks

·      use and promote the word, where possible, as single, unique trade mark

·      avoid use of the word as description on packaging or in promotion

 

 

 

 

References

1. Berenger Blass Wine Estates v Andrew Harris [2009] ATMO 52 (9 July 2009)

2. Australian Wine and Brandy Corporation Act 1980 Section 4

3. Ciba-Geigy Australia Ltd v Eli Lilly and Co (1983) 2 IPR 353