BAROSSA VALLEY ESTATE PTY LTD V AUSTRALIAN VINTAGE LIMITED [2015] ATMO 70 (5 AUGUST 2015)

Barossa Valley Estate (BVE) opposed the Australian Vintage (AV) application for the below BAROSSA VALLEY WINE COMPANY Logo trade mark

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The AV application was accepted with an endorsement to the effect that all alcoholic beverages sold under the trade mark will originate from the ‘Barossa Valley’ region.

BVE attempted to argue that other traders would have a legitimate need to use the words BAROSSA VALLEY WINE COMPANY for the same goods as those covered under the AV application. The Hearing Officer agreed, but noted that he could not foresee any reason, nor was any convincing reasoning led, as to why another trader would wish to use the overall design and stylisation of the AV trade mark. As such, the section 41 ground failed.

BVE then attempted to argue that the AV trade mark as deceptively similar to its BAROSSA VALLEY ESTATES trade mark. The Hearing Officer found that the trade marks were not deceptively similar noting; ‘the expressions ‘Barossa Valley Wine Company’ and ‘Barossa Valley Estate’ have different meanings and are likely to be perceived as being different. Of course, there is also the letter B enclosed in the ornate frame which further distinguishes the trade marks from each other’. The section 44 ground failed.

On section 60, the Hearing Officer noted that BVE’s trade mark appeared as a ‘small’ necklet trade mark and is less obvious that other trade marks on BVE’s goods.   The Hearing Officer’s view of the evidence was that BVE’s trade mark had not required a reputation as a result of the nature of the trade mark (being descriptive), low to modest sales, relative lack of prominence of the trade mark on BVE’s goods and its use as part of an overall stylised mark. Having not established the required reputation, the section 60 ground failed.

On section 62A, the Hearing Officer quickly dismissed the bad faith allegation.

The opposition failed on all grounds.

To view the Office decision, click here.